WIPO Domain Name Decision D2021-2298 for deutzpart.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Deutz AG v. haoxiao zhang Case No. D2021-2298 1. The Parties

Complainant is Deutz AG, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.

Respondent is haoxiao zhang, China, self represented.

2. The Domain Name and Registrar

The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On July 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2021, 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 Complainant on July 16, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint in English on July 19, 2021.

On July 16, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 19, 2021, Complainant confirmed its request that English be the language of the proceeding. On July 16, 2021, the Center received three emails from Respondent. 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. On August 13, 2021, the Center received an informal response from Respondent. On August 16, 2021, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed Yijun Tian as the sole panelist in this matter on September 3, 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 A. Complainant

Complainant, Deutz AG, is a company incorporated in Germany. Founded in 1864, Complainant is a well-known engine manufacturer. It manufactures and distributes worldwide diesel engines and engine components for agricultural machinery, marine propulsion, automobiles, and construction equipment.

Complainant has exclusive rights in the DEUTZ and DEUTZ related marks. Complainant owns numerous DEUTZ trademarks worldwide, including the International trademark registered on March 30, 2000 (the International Trademark registration number 739507), and the Chinese trademark registered on July 14, 2015 (the Chinese Trademark registration number 14132095) (Annex 5 to the Complaint).

Complainant also owns a large number of domain name registrations, including registered on April 18, 1996, and registered on September 21, 2014. Complainant promotes its engines, spare parts and related services on the website “www. deutz.com”, and the domain name redirects to its main website “www. deutz.com”.

B. Respondent

Respondent is haoxiao zhang, China. The disputed domain name was registered on April 10, 2017. The disputed domain name resolves to a website providing products under Complainant’s DEUTZ trademark, as well as products of Complainant’s competitors.

5. Parties’ Contentions A. Complainant

Complainant contends that the disputed domain name is confusingly similar to the DEUTZ trademark. Simply adding the generic element “part” as the suffix, in tandem with the DEUTZ trademark does not prevent a finding of confusing similarity.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name, and Respondent is using the disputed domain name to sell the purported Deutz branded products of Complainant and the third-party products.

Complainant contends that Respondent has registered and used the disputed domain name in bad faith.

Complainant requests that the disputed domain name be transferred to it.

B. Respondent

Respondent did not submit a formal Response, however, Respondent sent several emails to the Center.

Respondent contends that the disputed domain name was registered on April 10, 2017, and the Complaint was filed in July 2021, over four years after the registration of the disputed domain name. Respondent has conducted marketing promotion, and spent time and money to maintain the registration of the disputed domain name. The disputed domain name has been known by Respondent’s clients.

Respondent contends that Complainant is infringing the interests of others and has initiated the proceedings against others in bad faith.

Respondent contends that it legally registered the disputed domain name, and it has not infringed the rights of Complainant because Complainant has not objected the registration when Respondent registered the disputed domain name.

6. Discussion and Findings 6.1. Procedural Issues A. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for following reasons:

(a) Complainant and its representatives are unable to communicate in Chinese. Requiring Complainant to submit documents in Chinese would lead to delay and cause Complainant to incur inadequate translation expenses.

(b) The disputed domain name is obviously used to freeride on Complainant’s rights in its marks and trade name and use the disputed domain name for a website infringing Complainant’s intellectual property rights. It would be inappropriate to require Complainant to submit the Complaint and corresponding material in Chinese.

(c) The disputed domain name combines Complainant’s mark DEUTZ with the English term “part”. This is, in itself, an indication that Respondent is able to communicate in English and addresses English speaking customers.

(d) The website under the disputed domain name is in English.

Respondent sent email communications in Chinese. However, Respondent did not make any specific submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case. Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).

On the record, Complainant is a company from Germany and Respondent is a Chinese resident. Considering the following, the Panel has decided that English should be the language of the proceeding: (a) the disputed domain name includes Latin characters and particularly an English word “part”, rather than Chinese scripts, and is registered in the generic Top-Level Domain (“gTLD”) space comprising of Latin characters “.com”; (b) the disputed domain name resolves to a website, which is in the English language; (c) the Center has notified Respondent, in both English and Chinese, of the proceeding, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceeding; and (d) the Center informed the Parties, in both English and Chinese, that it would accept a Response in either English or Chinese, and Respondent submitted its informal Response in Chinese.

Accordingly, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

B. Delay in bringing the Complaint

Respondent contends that the disputed domain name was registered on April 10, 2017, and the Complaint was filed in July 2021, over four years after the registration of the disputed domain name. UDRP panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. The Panel agrees with section 4.17 of the WIPO Overview 3.0 that “Panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse/damage, not to provide equitable relief. Panels have furthermore noted that trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of, particularly when cybersquatters face almost no (financial or practical) barriers to undertaking (multiple) domain name registrations. Panels have therefore declined to specifically adopt concepts such as laches or its equivalent in UDRP cases.”

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the DEUTZ marks. The disputed domain name comprises the DEUTZ mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the suffix “part”, and the gTLD suffix “.com” to the DEUTZ marks. This does not compromise the recognizability of Complainant’s marks within the disputed domain name, nor prevent a finding of confusing similarity between Complainant’s registered trademarks and the disputed domain name (Decathlon v. Zheng Jianmeng,WIPO Case No. D2019-0234).

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).

Further, in relation to the gTLD suffix, WIPO Overview 3.0 states: “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 disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11.1.)

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

According to the Complaint, founded in 1864, Complainant is a well-known engine manufacturer. It manufactures and distributes worldwide diesel engines and engine components for agricultural machinery, marine propulsion, automobiles, and construction equipment. The DEUTZ marks have been registered by Complainant internationally since at least 2000, and registered in China since at least 2015, which precede Respondent’s registration of the disputed domain name (in 2017). Moreover, Respondent is offering to sell products under Complainant's DEUTZ trademark, as well as products of Complainant’s competitors through the website resolved by the disputed domain name (The Argento Wine Company Limited v. Argento Beijing Trading Company,WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; and Philip Morris Products S.A. v. Lin Cheng, Han Ming,WIPO Case No. D2018-2688).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “deutz” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the DEUTZ marks or to apply for or use any domain name incorporating the DEUTZ marks, and Respondent has, through the use of a confusingly similar domain name and its associated website to sell Deutz branded products, as well as third-party products.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2017, long after the DEUTZ marks became widely known. The disputed domain name is confusingly similar to the DEUTZ marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, as introduced above, according to the Complaint, the disputed domain name resolves to a website offering to sell products under Complainant’s DEUTZ trademark and products of Complainant’s competitors.

The Panel notes that Respondent has not produced any evidence to establish rights or legitimate interests in the disputed domain name.

Accordingly, Complainant has established that Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registration in Bad Faith

The Panel finds that Complainant has a widespread reputation in the DEUTZ marks with regard to its products and services. As introduced above, Complainant is a well-known engine manufacturer. The DEUTZ marks have been registered by Complainant internationally since at least 2000, and in China since at least 2015, which precede Respondent’s registration of the disputed domain name (in 2017). It is not conceivable that Respondent would not have had actual notice of the DEUTZ marks at the time of the registration of the disputed domain name (in 2017) particularly given the composition of the disputed domain name (which includes the DEUTZ mark and the additional term “part” related to Complainant’s products), Complainant’s own domain name registered on September 21, 2014, and that Respondent has used the website resolved by the disputed domain name to sell purported Complainant’s products as well as Complainant’s competitors’ products. The Panel therefore finds that the DEUTZ mark is not one that a trader could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Use in Bad Faith

Respondent is using the website resolved by the disputed domain name to sell purported products of Complainant and of its competitors. Thus, the Panel concludes that Respondent is using the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website.

Given the reputation of the DEUTZ marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the DEUTZ marks. Moreover, as mentioned above, Respondent is offering to sell purported Complainant’s Deutz brand products as well as Complainant’s competitors’ products via the website to which the disputed domain name resolves, presumably for commercial gain.

The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith. Such use of the disputed domain name is also disruptive in relation to the interests of Complainant.

In summary, Respondent, by choosing to register and use the disputed domain name, which is confusingly similar to the DEUTZ marks, intended to ride on the goodwill of this trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

In light of the above, the Panel finds that Complainant did not bring the Complaint in bad faith.

7. Decision

For all 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 Complainant.

Yijun Tian
Sole Panelist
Dated: September 29, 2021

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