The Complainant is CNH Industrial N.V., United Kingdom, represented by Harmsen Utescher, Germany.
The Respondent is Claus Norbert Hennen, Germany.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2021. On December 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 2, 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 the Complainant on December 2, 2021 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 December 3, 2021.
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 December 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2021.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on January 10, 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, CNH Industrial N.V., is a supplier of capital goods which appears to be active in the financial sector as well.
The Complainant is the owner of trademark registrations corresponding to or including the terms “CNH” and “capital” registered for services in class 36 (financial services):
- CNH, European Union trademark (“EUTM”) registered on October 22, 2002 under No. 002242899 and covering classes 7, 12, 25, 35 and 36;
- CNH CAPITAL, EUTM registered on March 29, 2005 under No. 003573979 and covering class 36;
- CNH INDUSTRIAL CAPITAL, figurative EUTM registered on June 20, 2014 under No. 012537718 and covering class 36 (displayed below):
The Disputed Domain Name has been registered on April 30, 2021. The Complainant claims that the Disputed Domain Name referred to a website offering financial services without providing evidence to support its claim. However, based on limited factual research, the Panel was able to confirm the Complainant’s claim.
5. Parties’ Contentions A. ComplainantThe Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent is in no way affiliated with the Complainant and has not registered the Disputed Domain Name for a bona fide reason, nor has the Respondent made any bona fide use of the Disputed Domain Name. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered and uses the Disputed Domain Name to intentionally attract visitors for commercial gain by creating confusion with the Complainant’s trademarks.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15 of the Rules provides that the Panel is to decide the 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.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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.
The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly SimilarTo prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s CNH and related trademarks have been registered in connection to the Complainant’s capital goods business, including financial services.
The Disputed Domain Name incorporates the Complainant’s CNH and CNH CAPITAL word marks in their entirety, simply adding a hyphen between the terms “cnh” and “capital”.
Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other (descriptive) terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Additionally, it is well-established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s CNH trademark and virtually identical to the Complainant’s CNH CAPITAL trademark.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).
The Complainant claims that to the best of its knowledge, the Respondent is not entitled to any trademark, trade name or any other right in the name “cnh-capital”. The Complainant also claims it did not authorize the Respondent’s use and registration of the Disputed Domain Name. There are no indications that a connection between the Complainant and the Respondent exists or existed.
Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name is virtually identical to the Complainant’s CNH CAPITAL trademark as it simply adds a hyphen between the two terms. The Disputed Domain Name also incorporates the Complainant’s CNH trademark in its entirety. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant.
Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).
The Panel notes that according to the information provided by the Registrar, the Respondent is named “Claus Norbert Hennen”. The initials of the Respondent thus correspond to the Complainant’s CNH mark, which could justify legitimate interests in the Disputed Domain Name. The Complainant also provided no evidence of the Respondent’s use of the Disputed Domain Name.
However, based on its own limited factual research, the Panel observes that the Disputed Domain Name used to refer to a website in German language mentioning “CNH Capital” several times, sometimes adding “GmbH” which would refer to a German company. Moreover, the Panel observes that this website included a logo with the sign “CNH” stylized in a way which is highly similar to the “CNH” sign included in the Complainant’s figurative trademark as shown above under section 4, with the exception of the dot above the letter “H”. Finally, the website linked to the Disputed Domain Name appeared to offer services similar to the Complainant’s services. In the Panel’s view, this does not amount to a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. The Complainant provided a copy of a letter which appears to be sent by the representative of a company called “CNH Capital GmbH”. In this letter, CNH Capital GmbH’s representative mentions that the website does not belong to its client and that the identity of the company and the corresponding managing director were stolen. It is unclear to the Panel whether this company is actually linked to the Respondent. In any event, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad FaithThe Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name:
- The Disputed Domain Name includes the Complainant’s CNH trademark in its entirety and is virtually identical to the Complainant’s CNH CAPITAL trademark;
- The website linked to the Disputed Domain Name included a logo with the sign “CNH” stylized in a way which is highly similar to the Complainant’s “CNH” logo, such as the one included in the Complainant’s figurative trademark displayed above under section 4.
In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
The Respondent has used the Disputed Domain Name to resolve to a website which appeared to offer services similar to the Complainant’s services. As mentioned above, this website included a logo which is highly similar to the Complainant’s logo. In the Panel’s view, this indicates that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is established that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
7. DecisionFor 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
Flip Jan Claude Petillion
Sole Panelist
Date: January 24, 2022