The Complainant is Knorr-Bremse AG, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Gurkan TOPCU, Turkey. 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 June 30, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication in English and Turkish to the Parties on July 2, 2021 regarding the language of the proceeding, as the Complaint was filed in English and the language of the Registration Agreement for the Domain Name is Turkish. The Complainant confirmed its request for English to be the language of the proceeding on July 5, 2021. The Respondent sent an email communication in English and Turkish on the same day, stating that email communications should be sent in Turkish. The Center verified that 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 Turkish of the Complaint, and the proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. On August 4, 2021, the Complainant sent an email communication to the Center. On July 27, 2021 and on August 10, 2021, the Respondent sent email communications in English and Turkish to the Center but did not submit any formal response. On August 12, 2021, the Center informed the Parties that it will proceed to panel appointment. The Center appointed Dilek Ustun Ekdial as the sole panelist in this matter on August 17, 2021. 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 developer and manufacturer of braking systems for rail and commercial vehicles. It was founded already in Berlin in 1905 by Mr. Georg Knorr, one of the world’s pioneers in the development of braking systems. The company name emphasizes the Complainant’s activity, as the German word “Bremse” means brake. The Complainant, based in Munich, Germany, is one of the world’s leading developers and manufacturers of braking systems, with over 19,000 employees and businesses in over 90 locations in 27 countries throughout the world. The Complainant is the owner of several international trademark registrations, namely inter alia: - Trademark No. 726778 - KNORR-BREMSE, registered on October 20, 1999; - Trademark No. 1483795 - KNORR-BREMSE, registered on March 8, 2019. These trademarks are protected for the goods and services in the industry field, in particular brakes, where the Complainant is doing business. Further, the Complainant is the owner of more than 80 domain names incorporating the term “Knorr-Bremse” or “Knorr”, inter alia: - The Domain Name was registered on August 26, 2013 and it resolves to an active website, selling allegedly brand spare parts products related to vehicles under the KNORR–BREMSE trademark but also various goods of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant The Complainant has registered trademark rights in KNORR-BREMSE. The Complainant submits that the Domain Name is confusingly similar to the Complainant’s KNORR-BREMSE trademark. According to the Complaint, the Domain Name combines the KNORR-BREMSE mark with the generic element “service”, which will be perceived as being clearly descriptive and non-distinctive. This additional element “service” will thus not be perceived by the relevant public as a difference and could not distinguish the Respondent or the goods and services offered under the Domain Name from the Complainant’s business and its goods and services. The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant asserts that the Respondent is unable to demonstrate rights or legitimate interests in the Domain Name. The Respondent has not been allowed by the Complainant to make any use of its trademarks. The term “Knorr-Bremse” in the Domain Name is used to direct consumers in search of Knorr-Bremse brand products to a website, which advertises Knorr-Bremse products as well as competitive products. Therefore, according to the Complaint, the Respondent cannot claim to use the Domain Name in connection with a bona fide offering of goods, although it seems possible that it is offering original Knorr-Bremse parts or at least serve as spare parts or “apply to” brakes and other products of the Complainant. The Complainant argues that the Respondent had knowledge of the Complainant and its products at the time of registration of the Domain Name. The Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s registered KNORR-BREMSE trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on the Respondent’s website or location. It constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not submit a formal response to the Complainant’s contentions. As indicated in the section 3 above, several email communications were received from the Respondent, indicating mainly that: a) the domain names are registered on the “first come, first served” basis; b) the Domain Name was registered by him many years ago; c) no action has been taken to adversely effect the brand image of the Complainant; d) the Complainant has the bad intention to take the Domain Name from the Respondent even though he bought it first; (e) if the Complainant wants the Domain Name, he can sell the Domain Name for EUR 15,000. 6. Discussion and Findings 6.1. Procedural Issue: 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 Complainant has requested English to be the language of the proceeding while the Respondent indicated that email communications should be sent in Turkish. The Panel determines in accordance with the Rules, paragraph 11(a), that the language of this proceeding shall be English for the following reasons: - the Domain Name contains the Complainant’s trademark KNORR-BREMSE with an English word “service”; Under these circumstances, the Panel determines English to be the language of this proceeding. However, the Panel will accept the Respondent’s communications in Turkish. The Panel believes such decision is fair to both Parties, and the Respondent will not be prejudiced by a decision being rendered in English. 6.2. Substantive Issues Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainant bears the burden of showing: (i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Domain Name The generic Top-Level Domain (“gTLD”) extension “.com” is generally not to be taken into consideration when examining the identity or confusing similarity between the Complainant’s trademark and the Domain Name. Therefore, the Panel finds that the Domain Name is confusingly similar to the trademark KNORR-BREMSE in which the Complainant has rights, satisfying the condition of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent has not provided any evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the Domain Name. It is clear that the Respondent has not demonstrated any bona fide offering of goods or services for his use of the Domain Name, nor has the Respondent shown that he has been commonly known by the Domain Name. Rather, the evidence of the Complainant suggests that the Respondent has used the Domain Name in an attempt to trade off the goodwill associated with the Complainant’s trademark. The Complainant also showed, inter alia, that the Respondent has neither a license nor any other permission to use the Complainant’s trademark in the Domain Name or otherwise. A reseller or distributor can be making a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1): (i) the respondent must actually be offering the goods or services at issue; These requirements are not cumulatively fulfilled in the present case. The website associated with the Domain Name reproduces the Complainant’s trademark, offering for sale allegedly spare parts products related to vehicles, while not including any disclaimer regarding the ownership of the trademark by the Complainant and its (or lack of) relationship to the Respondent. The website also offers for sale third party products. The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. Moreover, the nature of the Domain Name carries a risk of implied affiliation with the Complainant. See WIPO Overview 3.0, section 2.5.1. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith Taking into account the Respondent’s use of the Domain Name as described in section 6.2.B above, and the Complainant’s use and registration of its KNORR-BREMSE trademarks long before the registration of the Domain Name, the Panel concludes that the Respondent was aware of the Complainant and its business when the Respondent registered the Domain Name. The Respondent has attempted to attract Internet users, for commercial gain, to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademarks in the Domain Name and on the web page, in the Panel’s view, the Respondent’s website suggests to be an affiliated dealer of the Complainant. This is supported by the Respondent’s use of the Complainant’s official trademark images. However, the Respondent’s website also offers for sale third party products. Further, the Panel notes that the Respondent offers to sell the Domain Name to the Complainant for EUR 15,000, which also suggests bad faith. The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning 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 Domain Name Dilek Ustun Ekdial
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- the Respondent sent email communications both in English and Turkish;
- The Complainant is unable to communicate in Turkish. Requiring the Complainant to submit documents in Turkish would lead to delay of the proceeding and cause the Complainant to incur additional translation expenses.
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.
Sole Panelist
Date: September 5, 2021
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