The Complainant is Terex MHPS GmbH of Dusseldorf, Germany, represented by Bryan Cave, LLP, United States of America.
The Respondent is Salman Arasteh of Tehran, Islamic Republic of Iran, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Realtime Register B.V. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 3, 2016. On May 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 4, 2016, 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 May 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2016. A communication from the Respondent was sent to the Center on May 14, 2016.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 10, 2016. 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, Terex MHPS GmbH was formerly called Demag Cranes AG. It is a supplier of industrial cranes, crane components and services under the DEMAG brand, which has been used by the Complainant or its predecessors in title for over 100 years. It owns an International trademark registration for DEMAG, registration number. 873,164, registered on August 18, 2004. The Complainant maintains an active presence on the Internet, including through its domain names and which were both registered in 1998. The Complainant carries out business on a worldwide basis and is clearly a substantial enterprise.
On June 24, 2015 the Respondent registered the Disputed Domain Name. The Disputed Domain Name is linked to a website which copies large amounts of text and images from the Complainant's website and which offers for sale a range of cranes and crane related products. Contact details on the website provide an address and telephone numbers in Iran which are not associated with the Complainant. 5. Parties' Contentions A. Complainant
The Complainant's case can be summarized as follows.
a) The Disputed Domain Name is confusingly similar to the DEMAG trademark.
b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondent has registered and used the Disputed Domain Name in bad faith as the Disputed Domain Name must have been registered with knowledge of the Complainant's trademark rights. The use by the Respondent to direct visitors to a website which is not authorized by the Complainant but which sells either the Complainant's products or products from competitors of the Complainant is use in bad faith.
The Complainant asks that the Disputed Domain Name be cancelled. B. Respondent
The Respondent sent an email to the Center on May 14, 2015. The Panel will treat this email as the Respondent's Response. It reads as follows:
"Hi
Have a good time for you
I have received your message
Do not complain
We can resolve the issue for Msalmt
Maybe has been misunderstood
We have not seen any abuse commercially Company Name Dmag
Given that we're selling cranes
Demag had just started to advertise and sell products.
All of these companies were bought by intermediaries Dmag Germany
We have no place on your website or representative office of Germany have not Demag
We have to show goodwill to cut the English version of our website
For example, many websites that sell Apple products
We have just started selling and advertising Dmag Germany
And that's just for the benefit of the company is Demag
All costs of advertising and marketing we have been in favor of the company Demag
And we're just as intermediaries to offer products and services Demag
Because we have our technicians who are familiar Demag services in Iran are widely used in fields Dmag crane repairs
We also asked the sales representative in Iran announced Dmag Germany
Unfortunately, we have not received a response from Demag
We are ready to cooperate with the Demag company to move Hall
And also will work on this issue
Best Regards." 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
(i) the Respondent's domain name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in the domain name;
(iii) the Respondent's domain name has been registered or is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of a trademark registration consisting of DEMAG. It is well established that the country code Top-Level Domain ("ccTLD") ".co" does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar (see for example Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429).
The Panel holds that Disputed Domain Name is identical to the DEMAG trademark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the DEMAG trademark. The Complainant has prior rights in the DEMAG trademark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example 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).
The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name as further discussed below. Accordingly the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the DEMAG trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the DEMAG trademark, and the confusingly similar nature of the Disputed Domain Name to the DEMAG trademark, and the lack of any explanation from the Respondent as to why it registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its products.
It is not entirely clear to the Panel whether the Respondent is seeking through its website to sell products which compete with those of the Complainant, or alternatively is seeking to sell products produced by the Complainant itself. The Respondent's email (see above) suggests it may be the latter but the point does not matter. The website operated by the Respondent at the Disputed Domain Name is clearly promoting a business which supplies cranes and associated equipment (whether sourced from the Complainant or elsewhere) and the Panel has no doubt the Respondent was by use of the Disputed Domain Name seeking to attract customers who were looking for the Complainant and in doing so was suggesting that it either was the Complainant or was authorized by the Complainant. As such its behavior clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your web site or location".
Accordingly the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, , be cancelled.
Nick J. Gardner
Sole Panelist
Date: June 17, 2016
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