The Complainant is Hazet-Werk Hermann Zerver GmbH & Co. KG, Germany, represented by Krieger Mes & Graf v. der Groeben, Germany.
The Respondent is Lin Sheng (林盛), China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2020. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 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 July 20, 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 amendment to the Complaint on August 5, 2020 together with a request for a stay of the proceeding until August 10, 2020. The Complainant filed a further amendment to the Complaint on September 3, 2020. The Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding on July 20, 2020. The Complainant confirmed its request that English be the language of the proceeding on July 28, 2020. 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 in English and Chinese of the amended Complaint, and the proceedings commenced on September 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2020. The Center appointed Matthew Kennedy as the sole panelist in this matter on October 8, 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 manufactures tools, including hand tools, pneumatic tools, workshop tools and specialty tools. It offers and distributes its products under the trademark HAZET, which is composed of the initials as pronounced in German of the Complainant’s founder, Mr. Hermann Zerver. The Complainant holds German trademark registration number 178719 for HAZET, registered on July 17, 1913, and German trademark registration number 542327 for a semi-figurative HAZET mark, registered on February 16, 1942, both specifying tools and other goods. Both trademark registrations remain current. The Complainant also registered the domain names The Respondent is an individual resident in China. He shares a contact email address in the Registrar’s WhoIs database with a Chinese company named Vacker Power Equipment Co. Ltd. The disputed domain name was registered on February 15, 2019. It formerly resolved to a website in English offering for sale heavy duty machinery tools, allegedly made in Germany. Prices were displayed in Euros. The website prominently displayed a blue and yellow logo (the “Kraftzet logo”) that shares the figurative elements and most of the dominant textual element of the Hazet logo, as follows: According to evidence submitted by the Complainant, Vacker Power Equipment Co. Ltd displays the Kraftzet logo on its website and claims to have developed the Kraftzet brand. At the request of the Complainant, the District Court Düsseldorf issued a preliminary injunction on October 29, 2019 addressed to Vacker Power Equipment Co. Ltd., prohibiting that company from using in the course of trade in the Federal Republic of Germany the term “Kraftzet” and/or the Kraftzet logo and another logo and/or the typical HAZET appearance inter alia for tools, in particular, on the website associated with the disputed domain name and/or two other domain names. The decision indicated that an appeal could be lodged against it but there is no indication that any such appeal was lodged. Subsequently, the disputed domain name ceased to resolve to the tool website. At the time of this decision, it resolves to an error message in Chinese and its status is “forbidden”. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s HAZET mark and logo. The last syllable is identical and the first syllable uses the same vowel. The pronunciation is similar. The goods offered for sale on the Respondent’s website are identical to those for which the Complainant’s trademark is registered. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The only use that the Respondent is making of the disputed domain name is exploiting the Complainant’s reputation for his own personal gain. The disputed domain name was registered and is being used in bad faith. The associated website prominently displays a logo very similar to the Complainant’s logo and offers for sale goods of the same type as the Complainant’s. This is an intentional and deceptive business practice. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Issues A. Effect of Court Proceeding Prior to the commencement of this proceeding, the District Court Düsseldorf issued a preliminary injunction addressed to Vacker Power Equipment Co. Ltd. regarding the use of the sign “Kraftzet” and the related logo in the Federal Republic of Germany. Paragraph 4(k) of the Policy provides that the mandatory administrative proceeding requirements set forth in paragraph 4 shall not prevent either the Respondent or the Complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before this mandatory administrative proceeding is commenced or after it is concluded. Paragraph 18(a) of the Rules provides that, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel has the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. The Panel notes that this dispute is properly within the scope of the Policy and that the Panel has jurisdiction to decide the dispute. The Registration Agreement pursuant to which the disputed domain name was registered incorporates the Policy. The dispute that is the subject of the Complaint is unresolved as the disputed domain name remains registered in the name of the Respondent. The Complainant requests a transfer of the disputed domain name in this administrative proceeding, although the Panel’s jurisdiction may to some degree overlap with that of the District Court Düsseldorf. Nothing on the record indicates that a court proceeding has been initiated against the Respondent personally, although the Panel recognizes that he may be an officer or employee of Vacker Power Equipment Co. Ltd. Given that the Policy can provide an effective and expeditious remedy and the court proceeding involved broader trade coverage, the Panel sees no reason to suspend or terminate this proceeding if the Complainant is able to satisfy the requirements of paragraph 4 of the Policy. Therefore, the Panel will proceed to decide this dispute. The Panel finds the record of this administrative proceeding adequate to reach its decision without reference to the findings of the national court. This decision is without prejudice to any specific action that a court may deem appropriate or necessary in furtherance of the decision of the District Court Düsseldorf. B. Language of the Proceeding Paragraph 11(a) of the Rules provides that “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”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese. The Complainant requests that the language of the proceeding be English. Its main arguments are that the use of Chinese would cause undue delay and expense for the Complainant and that the website associated with the disputed domain name was in English. Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293. The Panel observes that in this proceeding the Complaint was filed in English and that the Respondent has used the disputed domain name in connection with a website in English, from which it is reasonable to infer that the Respondent is familiar with that language. The Respondent has not expressed any interest in commenting on the language of the proceeding, responding to the Complainant’s contentions, or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay. Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed. 6.2 Substantive Issues Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (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 Based on the evidence submitted, the Panel finds that the Complainant has rights in the HAZET wordmark and the semi-figurative HAZET mark (the “HAZET marks”). The disputed domain name incorporates all but one of the letters of the HAZET marks. The disputed domain name replaces the initial consonant (“h”) in the trademarks with other consonants (“kr”) that are aurally similar to it when pronounced in German. The disputed domain name also adds the consonants “ft” after the first vowel. Overall, the operative element of the disputed domain name is aurally similar to the HAZET marks. The Panel considers that there is a prima facie case of confusing similarity between the disputed domain name and the HAZET mark. Further, the Panel takes note that the website associated with the disputed domain name displays a logo that is similar to the Complainant’s, which confirms that the Respondent was seeking to target the HAZET marks through the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15. The disputed domain name includes a generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue. As regards the first circumstance set out above, the Respondent has been using the disputed domain name, which is confusingly similar to the Complainant’s HAZET marks, in connection with a website that prominently displays a logo similar to the Complainant’s, offering for sale goods of a type identical to those of the Complainant, and claiming that they are manufactured in Germany, where the Complainant is established. It is clear from the evidence and arguments submitted by the Complainant that the Respondent is not a licensee of the Complainant or otherwise authorised or allowed by the Complainant to make any use of its HAZET marks. At the time of this decision, the disputed domain name resolves to an error message. The Panel does not consider either of the Respondent’s uses of the disputed domain name to be in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(i) of the Policy. As regards the second circumstance set out above, the Respondent’s name is listed in the Registrar’s WhoIs database as Lin Sheng (林盛), not the disputed domain name. While he may be an officer of Vacker Power Equipment Co. Ltd., there is no evidence on the record that that company is known as Kraftzet apart from its own websites. Nothing on the record indicates that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy. As regards the third circumstance set out above, the Respondent has used the disputed domain name in connection with a website that offers goods for sale. At the time of this decision, the disputed domain name resolves to an error message. These uses are not a legitimate noncommercial or fair use of the disputed domain name within the terms of paragraph 4(c)(iii) of the Policy. In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complainant’s contentions. Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows: “(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 Respondent registered the disputed domain name in 2019, long after the Complainant obtained its trademark registrations. “Hazet” is a coined word with no apparent meaning in any language relevant to this proceeding other than as the Complainant’s trademark. The website associated with the disputed domain name prominently displays a logo similar to the Complainant’s, offering for sale goods of a type identical to those of the Complainant, and claiming that those goods are manufactured in Germany, where the Complainant is established. The Panel does not consider these circumstances to be coincidental. Rather, the Panel considers it likely that the Respondent knew of the Complainant’s HAZET marks at the time at which he registered the disputed domain name. The Respondent has been using the disputed domain name in connection with a website that prominently displays a logo similar to the Complainant’s, offering for sale goods of a type identical to those of the Complainant, and claiming that those goods are manufactured in Germany, where the Complainant is established. The Respondent offers no explanation for his use of the disputed domain name. Given all the facts, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on that website within the terms of paragraph 4(b)(iv) of the Policy. The Panel notes that the use of the disputed domain name subsequently changed and that it now resolves to an error message. The Panel does not consider that this change in use alters its conclusion; rather, it may be a further indication of bad faith. Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 Matthew Kennedy
Sole Panelist
Date: October 22, 2020
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