The Complainant is thyssenkrupp AG, Germany, internally represented.
The Respondent is Muhammad Sajjad, Pakistan.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2021. On November 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 5, 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 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 of the Complaint, and the proceedings commenced on December 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 6, 2022. The Respondent did not submit any response, save for an email to the Center on January 6, 2022. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on January 18, 2022.
The Center appointed Ian Lowe as the sole panelist in this matter on January 26, 2022. 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 BackgroundThe Complainant is a German company based in Essen, Germany. It is the result of a merger in 1999 of two German steel companies, Thyssen AG founded in 1891 and Krupp founded in 1811. The Complainant is a diverse industrial group operating in a range of business areas including steel, automotive, marine and materials services. It has more than 104,000 employees, with a revenue of over EUR 29 billion in the year 2019/2020 and operates in 60 countries with 471 subsidiaries.
The Complainant is the proprietor of numerous trademark registrations in respect of THYSSENKRUPP including International trademark number 1342637 registered on January 29, 2016 designating 66 territories and Pakistan trademark number 400410 registered with effect from October 22, 2015.
The Complainant registered the domain name
The Domain Name was registered on December 24, 2019. It presently resolves to a website purporting to offer for sale a range of sportswear and equipment. However, the majority of the links on the home page, including those associated with specific products such as “Add to Basket” all provoke an error page that shows “This page isn’t working”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Name is confusingly similar to its THYSSENKRUPP trademarks, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. RespondentThe Respondent did not reply formally to the Complainant’s contentions. Its email to the Center on January 6, 2022 attached a number of documents. These show that an individual (not the Respondent) was registered with the Pakistan Federal Board of Revenue as the owner of a business called Thyssenkrupp Pak from August 22, 2011 until October 23, 2019 with activities described as “Manufacturing/Manufacture of medical and dental instruments and supplies” and then from October 23, 2019 as “Importer/Exporter”.
They also show that an organization known as Thyssenkrupp Pak joined the Sialkot Chamber of Commerce and Industry in Pakistan on December 5, 2019.
6. Discussion and FindingsFor this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Complainant has uncontested rights in its THYSSENKRUPP trademarks, both by virtue of its numerous trademark registrations around the world and as a result of the goodwill and reputation acquired through its widespread use of the mark over many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the Complainant’s THYSSENKRUPP word mark together with a hyphen and the term “pak”, presumably a reference to Pakistan. In the Panel’s view, the addition of this term (and the hyphen) does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Domain Name is being used for a commercial website purporting to sell sportswear and sports equipment, but links required to purchase items do not function. The Respondent sent to the Center documents indicating that a business known as Thyssenkrupp Pak had been registered with a Chamber of Commerce and with the Pakistan Board of Revenue, but no formal Response has been filed justifying the use of the Complainant’s trademark in either a business name or a domain name. The Panel notes that the business name reproduces the Complainant’s THYSSENKRUPP mark in its entirety.
The Panel cannot conceive of any reasonable explanation for choosing “Thyssenkrupp Pak” for such business. In the Panel’s view, the adoption of the business name, bound to create confusion with the Complainant and its mark, could not be sufficient to give rise to rights or legitimate interests in the Domain Name. The Panel also notes that the registration with the Board of Revenue initially described the business as the manufacture of dental instruments. These are typically manufactured using stainless steel, one of the Complainant’s products.
The Respondent has chosen not to respond formally to the Complaint to explain its use of the Domain Name or to take any other steps to counter the prima facie case established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithIn the view of the Panel, the nature of the THYSSENKRUPP mark is such that it could only possibly be taken to be a reference to the Complainant. In light of its nature and of its notoriety, the Panel is in no doubt that the Respondent had the Complainant and its rights in the THYSSENKRUPP mark in mind when it registered the Domain Name.
The Panel cannot conceive of any good faith use to which the Domain Name could be put. The Domain Name has been used for a website purporting to sell sportswear and equipment and the Panel considers that the Respondent registered the Domain Name for commercial gain with a view to taking unfair advantage of the Complainant’s rights in the THYSSENKRUPP mark, by confusing Internet users into believing that the Domain Name was being operated by or authorized by the Complainant for legitimate purposes related to the Complainant’s activities.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Ian Lowe
Sole Panelist
Date: February 9, 2022