ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Deutz AG v. Catalog PDF, Catalog PDF Case No. D2023-4627 1. The Parties The Complainant is Deutz AG, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany. The Respondent is Catalog PDF, Catalog PDF, Indonesia. 2. The Domain Name and Registrar The disputed domain name is registered with Squarespace Domains II LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 8, 2023. On November 8, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 17, 2023, 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 amendment to the Complaint on November 20, 2023. 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 the Respondent of the Complaint, and the proceedings commenced on December 5, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 2, 2024. page 2 The Center appointed Nayiri Boghossian as the sole panelist in this matter on January 3, 2024. 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 manufacturer of engines established in 1864. The Complainant owns many trademark registrations for DEUTZ worldwide such as the following: 1. International Trademark Registration No. 158321, registered on December 17, 1951; 2. International Trademark Registration No. 174094, registered on January 21, 1954; and 3. International Trademark Registration No. 452600, registered on May 6, 1980. The Complainant also has many domain names which contain the trademark DEUTZ such as , and . The disputed domain name was registered on August 5, 2023, and, at the time of filing the Complaint, resolved to a website which purportedly offered customized catalogs of the Complainant's spare part products. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights as it incorporates the Complainant's trademark in full. The addition of the term "catalog" does not distinguish the disputed domain name. On the contrary, it creates the impression that catalogs of the Complainant are offered through the disputed domain name. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. The Respondent is not licensed by the Complainant to use its trademark. The Respondent is offering through the disputed domain name catalogs of the Complainant's spare parts. Such use does not give the Respondent any rights as it constitutes a violation of trademark, copyright and trade secrets. Hence, there is no bona fide use. The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have had knowledge of the Complainant's trademark as it is offering a catalog of its products. The infringement of the Complainant's trademark and copyright rights as well as trade secrets is evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the mark is reproduced, and it is recognizable, within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms here, "catalog", may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's mark. The Respondent clearly knew about the Complainant's business and trademark as the disputed domain name resolves to a website purportedly offering a catalog of the Complainant's products and the disputed domain name was page 4 registered more than 70 years after the registration of the Complainant's trademark. The Panel considers that the nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant's trademark in its entirety together with the term "catalog", which reinforces the impression that the disputed domain name is the Complainant's website for purportedly offering catalogs of its products. The display of the Complainant's logo on the website at the disputed domain name reinforces the impression that the disputed domain name is affiliated with the Complainant. Such conduct of using a domain name, to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant's mark constitutes bad faith. Based on the available record, the Panel finds that the Complainant has established the third element 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, , be transferred to the Complainant. /Nayiri Boghossian/ Nayiri Boghossian Sole Panelist Date: January 4, 2024
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