The Complainant is Mabanaft GmbH & Co. KG, Germany, represented by Taylor Wessing, Germany.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Greg Tapper, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2020. On August 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 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 August 25, 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 August 30, 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 September 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2020. The Center appointed George R. F. Souter as the sole panelist in this matter on September 28, 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, and is an importer and wholesaler of petroleum products, its core business including regional trading, and wholesale and retail business to end users, operation of service stations, and bunkering. It is a subsidiary of Marquard & Bahls, which has a presence in 35 countries in Europe, America and Africa, and is a member of the Mabanaft Group of companies. The Complainant’s MABANAFT trademark is a neologism, deriving from a selection of letters (capitalised by the Panel for illustration) in the previous name of its parent company MArquard BAhls NAFTaproducts. The Complainant is the proprietor of a number of trademark registrations of its MABANAFT trademark, details of which have been supplied to the Panel. These include German Registration No. 766723, registered on October 23, 1962, and International Registration No. 267750, registered on April 1, 1963. The disputed domain name was registered on January 22, 2020, and is currently not in use. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is confusingly similar to its MABANAFT trademark, containing the Complainant’s trademark in its entirety, with the mere addition of the descriptive or non distinctive element “group” preceded by a hyphen immediately following the MABANAFT trademark. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that it has been unable to identify the owner of the disputed domain name, and has never consented to the use of its MABANAFT trademark in connection with the registration of a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (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 The Panel is satisfied from the information provided that the Complainant has sufficient rights in its MABANAFT trademark for the purposes of these proceedings. It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) indicator is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.com” indicator to be irrelevant in the circumstances of the present case, and so finds. It has been well-established in prior decisions under the UDRP that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive or non distinctive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers that the mere addition of a hyphen followed by the word “group” immediately following the Complainant’s MABANAFT trademark in the disputed domain name is the mere addition of a descriptive or non distinctive element, and does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s MABANAFT trademark, and so finds. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant’s distinctive MABANAFT trademark was deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. Since the decision in Telstra Corporation v Nuclear Marshmallows,WIPO Case No. D2000-0003, panels have consistently held that passive holding of a disputed domain name is not, by itself, sufficient to avoid a finding of use in bad faith. The Panel agrees with the panel in the Telstra Corporation v. Nuclear Marshmallows decision, and considers that the circumstances of the present case, in which the Complainant must have an obvious legitimate concern as to the possibility of damage to its commercial interests if the disputed domain name was to be brought into use, are sufficient to justify a finding of use in bad faith, and so finds. 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 George R. F. Souter
Sole Panelist
Date: October 12, 2020
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