The Complainant is Bechtle AG, Germany, represented by RTS Stoll Diekmann Partnerschaftsgesellschaft mbB Rechtsanwälte, Germany.
The Respondent is Domain Administrator United States of America / Jordan Blunt, Ghana. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2019. On September 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 September 4, 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 September 5, 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 September 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2019.
The Center appointed Zoltán Takács as the sole panelist in this matter on October 11, 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.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
The Complainant is the largest IT system house in Germany and one of the leading system houses in Europe with 70 locations in Germany, Austria and Switzerland. The Complainant operates a network of online shops serving customers all over Europe, has more than 10,000 employees, e-commerce companies in 14 European countries and shares in more than 100 companies.
In addition, through its group member Bechtle Financial Services AG the Complainant is providing financial services to customers.
The Complainant has a number of trademarks consisting of or comprising the BECTHLE trademark, including the European Union Trade Mark Registration (“EUTM”) No. 001796200 for the word mark BECHTLE, registered on January 28, 2002, for services of classes 35, 37, 38, 41 and 42 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks.
Since July 31, 1998, the Complainant owns the domain name , which links to its principal website.
The disputed domain name was created on July 5, 2019 and has been used for a website that prominently featured the Complainant’s trademark as well as its green rhombus logo. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name, which incorporates its BECHTLE trademark is confusingly similar to it since the other element of the disputed domain name is the dictionary phrase “investment”.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent registered and used the disputed domain name to intentionally and unlawfully target its BECHTLE trademark and exploit its reputation for its own commercial benefit. The Complainant asserts that the Respondent provided false contact information to the Registrar, which also evidences a showing of bad faith.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having rights in the BECHTLE trademark. For the purpose of this proceeding, the Panel establishes that the EUTM No. 001796200 for the word mark BECHTLE satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights in the BECHTLE mark, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the BECHTLE trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
The disputed domain name incorporates the Complainant’s BECHTLE trademark in its entirety and is clearly recognizable within the disputed domain name . Inclusion of the descriptive phrase “investment” does nothing to alleviate confusing similarity, which stems from the evident use of the Complainant’s BECHTLE trademark in the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s BECHTLE trademark and that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established rights in the BECHTLE trademark.
The Complainant has never authorized the Respondent to use its BECHTLE trademark in any way, and its prior rights in the BECHTLE trademark long precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have 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 your website or location or of a product or service on your website or location.
According to section 3.1.4 of the WIPO Overview 3.0, UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
The Complainant’s BECHTLE trademark is inherently distinctive and has been substantially and widely used.
The Respondent’s website under the disputed domain name prominently featured the Complainant’s BECHTLE trademark as well its distinctive green rhombus logo.
What is more, the Respondent copied complete sections of the Complainant website into its website under the disputed domain name.
This not only demonstrates that the Respondent clearly knew of the Complainant’s BECHTLE trademark at the time of registration but also that the Respondent deliberately registered and used the disputed domain name with evident intent to deceive Internet users into believing that its website is associated with the Complainant.
The Respondent chose not to respond to the Complaint. In view of the Panel it is reasonable to expect that a good faith individual or business respond to allegations of deliberate and blatant abuse of others rights as well as of providing false contact information to the Registrar.
The Respondent’s failure to react to the Complaint, in addition to the facts and circumstances discussed above convince the Panel 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 the source, sponsorship, affiliation or endorsement of such site or the services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 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.
Zoltán Takács
Sole Panelist
Date: October 25, 2019
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