The Complainant is Putzmeister Engineering GmbH, Germany, represented by von Briesen & Roper, s.c., United States of America (“United States” or “U.S.”).
The Respondent is Domains By Proxy, LLC, United States / David Adams, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 5, 2020. On June 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 9, 2020, 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 June 10, 2020, 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 amended Complaint on June 15, 2020. 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 June 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on August 19, 2020. 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 company founded in 1988 that operates a business that designs, manufactures, sells, and services truck mounted concrete pumps, stationary concrete pumps, stationary concrete placement booms, pipe delivery systems for industrial solids and concrete placement systems. It is held out to be the largest firm in its field with 3,000 employees worldwide1 . The Complainant holds registrations for the trademark PUTZMEISTER and variations of it in numerous jurisdictions, including, for example, U.S. Registration No. 2,479,279 registered on August 21, 2001. The Complainant owns the domain name The Respondent registered the Disputed Domain Name on October 6, 2015. The Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant cites its trademark registrations of the trademark PUTZMEISTER in various countries as prima facie evidence of ownership. The Complainant submits that the mark PUTZMEISTER is highly distinctive and well known, and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not granted any right or license to the Respondent to use its name and mark, there is no evidence that the Respondent has used or is preparing to use the Disputed Domain Name in connection with a bona fide offering of goods or services, there is no evidence that the Respondent has ever been commonly known by the Disputed Domain Name, the Respondent (a) does not own any trademark or service mark registrations encompassing the Disputed Domain Name, nor any variations thereof; (b) is not commonly known by the Disputed Domain Name; and (c) is not making a legitimate noncommercial fair use of the Disputed Domain Name. The Complainant also contends that the confusing similarity of the Disputed Domain Name is likely to give rise to an incorrect impression of an association with the Complainant, its trademark and its products, when in fact there is no such association The Complainant contends that such a Respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules, having regard to the passive holding of the Disputed Domain Name and the prior use and fame of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. Identical or Confusingly Similar The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark PUTZMEISTER in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the PUTZMEISTER trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark PUTZMEISTER; (b) with the letter “s” added at the end of the Complainant’s trademark; (c) followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “putzmeisters”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the substitution of one letter for another: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). Disputed domain names comprised of a trademark where the plural-signifying letter “s” has been added have been held to be “confusingly similar” in numerous UDRP cases, e.g., WGCZ S.R.O. v. WhoIsProtectService.net, Protectservice, Ltd. / Adam Hokke,WIPO Case No. D2015-0408; Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968; Virgin Enterprises Limited v. Domainadmin / Whois Privacy Corporation,WIPO Case No. D2015-1547. This Panel finds that the addition of the letter “s” does not in itself prevent a finding of confusing similarity. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not granted any right or license to the Respondent to use its name and mark, there is no evidence that the Respondent has used or is preparing to use the Disputed Domain Name in connection with a bona fide offering of goods or services, there is no evidence that the Respondent has ever been commonly known by the Disputed Domain Name, the Respondent (a) does not own any trademark or service mark registrations encompassing the Disputed Domain Name, nor any variations thereof; (b) is not commonly known by the Disputed Domain Name; and (c) is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant also contends that the confusing similarity of the Disputed Domain Name is likely to give rise to an incorrect impression of an association with the Complainant, its trademark and its products, when in fact there is no such association. The Complainant contends that such a Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant contends that the Respondent is typosquatting and that, in doing so, the Respondent is illegitimately passing off the Complainant’s goodwill and reputation for its own benefit. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. This Panel finds that the use of the Disputed Domain Name to resolve to an error page does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity of the Disputed Domain Named to otherwise mislead Internet users. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. In view of the composition of the Disputed Domain Name, the Panel finds it highly probable that the Respondent knew of the Complainant’s trademark PUTZMEISTER, and had it in mind at the time of registration. Given the uncontested evidence that the Complainant is the largest firm in its field, this Panel infers that the Respondent was aware of the Complainant’s use of the PUTZMEISTER trademark to identify its business. The unlikelihood that the Disputed Domain Name registered by the Respondent would contain the Complainant’s trademark – or a pluralized version of it – was pure coincidence, and the apparent lack of any good faith attempt to ascertain whether or not the Respondent was registering and using someone else’s trademark, such as by conducting a trademark search or search engine search, supports a finding of bad faith (see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; L’Oréal v. Domain Park Limited,WIPO Case No. D2008-0072; BOUYGUES v. Chengzhang, Lu Ciagao,WIPO Case No. D2007-1325; Media General Communications, Inc .v. Rarenames, WebReg,WIPO Case No. D2006-0964; Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Putzmeister Holding GmbH v. John Mai,WIPO Case No. D2019-2305). On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent, displaying an error message. WIPO Overview 3.0, section 3.3 sets out a non-exhaustive list of factors that have been considered by previous UDRP panels as relevant – having regard to the totality of the circumstances in each case – in determining whether the non-use of a domain name may prevent a finding of bad faith include: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” These factors are present in this case also. The Panel notes also that the Respondent failed to take part in the present proceeding. In the absence of a response, the inference is there to find – and the Panel does so find – that the conduct amounts to bad faith. The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814; Putzmeister Holding GmbH v. John Mai, supra). In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark PUTZMEISTER and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization to disrupt the business of the Complainant contrary to paragraph 4(b)(iii) of the Policy. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Nicholas Weston 1 “https://en.wikipedia.org/wiki/Putzmeister” accessed on September 5, 2020 to verify the scale of the Complainant’s business.
Sole Panelist
Date: September 5, 2020
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