mahleperformance.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MAHLE GmbH v. Mahle Performance

Case No. D2006-0272

1. The Parties

The Complainant is MAHLE GmbH, Stuttgart, Germany, represented by Bliss McGlynn, P.C., United States of America.

The Respondent is Mahle Performance, Jacksonville, Florida,  United States of America.

2. The Domain Name and Registrar

The Disputed Domain Name <mahleperformance.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2006. On March 6, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2006.

The Center appointed Irina V. Savelieva as the Sole Panelist in this matter on April 4, 2006. 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 MAHLE GmbH was established more than eighty years ago and is a leading and globally established systems partner to the international automotive industry. The Complainant is one of the 30 largest automotive suppliers worldwide with more than 38,000 employees at 75 production plants and research-and-development centers worldwide, having a direct on-site presence in all major automotive markets. The Complainant generates revenue in excess of € 3,75 billion Euro. Through this global positioning, the Complainant concentrates on its core business areas of the internal-combustion engine and related products.

Since 1958 the Complainant has registered the trademark “Mahle”, which is used extensively worldwide in connection with parts of internal-combustion engines, especially pistons and piston pins, rings, and cylinders.

The Complainant owns several domain names, including <mahle.com> and has the corresponding website “www.mahle.com”.

The Disputed Domain Name was registered on August 25, 2005, with Go Daddy Software.

The Respondent is currently using the Disputed Domain Name for its website “www.mahleperformance.com”. The main function of this website is to link it to other websites offering goods and services.

5. Parties’ Contentions

A. Complainant

(a) The Disputed Domain Name is confusingly similar to the trademark of the Complainant:

- The Complainant has registered the trademark “Mahle” since November 19, 1958, first in Germany and later in other countries worldwide, including the United States of America (Annex D to the Complaint).

- The name “Mahle” is used as a company name and as a name associated with internal-combustion engine and related automotive and is known worldwide.

- The Disputed Domain Name is confusingly similar to the Complainant’s trademark. The Disputed Domain Name is composed of the trademark “Mahle” and of the word “performance”.The Complainant’s trademark “Mahle” is clearly the predominant part of the Disputed Domain Name. Moreover, the Complainant’s website “www.mahle.com” bears the prominent header that reads “MAHLE – Driven by Performance”. The Disputed Domain Name presents therefore a high visual, phonetic and conceptual similarity to the Complainant’s trademark “Mahle” (Annex F to the Complaint).

- The addition of a generic term to a trademark in a domain name does not eliminate the confusing similarity.

- The Respondent’s domain name contains the exact trademark “Mahle” of the Complainant. The Respondent uses it together with the generic term “performance” which is related to the Complainant’s business and its slogan. The Disputed Domain Name is likely to cause confusion among consumers familiar with the Complainant’s `”Mahle” trademark and area of business.

(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:

- There is no indication that the Respondent is known under the Disputed Domain Name. The Respondent does not have any registered trademark incorporating the word “Mahle”.

- The Complainant has not licensed or otherwise permitted the Respondent to use its trademark “Mahle” or “Mahleperformance” or to apply for any domain name incorporating this mark.

- The Respondent does not use the Disputed Domain Name for a bona fide offering of goods and services. The Respondent’s use of the Disputed Domain Name consists only of diverting Internet uses to other websites.

- The Respondent registered the Disputed Domain name clearly because it is famous and in order to create an association with the Complainant (see Telstra Corp. Ltd. v. Nuclear Marshmallows WIPO Case No. D2000-0003).

- The Complainant submits that there is sufficient prima facie evidence that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.

(c) The Disputed Domain Name was registered and is being used in bad faith:

- The Disputed Domain Name was registered by the Respondent on August 25, 2005 many years after the Complainant and its trademark became well-known worldwide.

- Since its registration the Respondent has never used the Disputed Domain Name to refer to an active website, it is solely used for what is called a “parking” website.

- The Respondent intentionally attempts to attract the Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website, product or service.

- The Respondent causes harm to the Complainant, its goodwill and reputation. The fame and reputation of the Complainant’s trademark should be persuasive in determining the Respondent’s bad faith.

- The Respondent is offering to sell and is selling Mahle pistons without the Complainant’s authorization. By using the Disputed Domain Name in this way the Respondent unfairly competes with the Complainant.

- The Complainant submits that the Respondent has registered and is using the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.

However, as noted, the Respondent failed to file any reply to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision based on the Complaint.

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Disputed Domain Name, the Complainant must prove that each of the three following elements are satisfied:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Pursuant to paragraph 15(a) of the Rule, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences, as it considers appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.

Identical or Confusingly Similar

The Complainant has registered the trademark “Mahle” in many countries of the world, including:

- in the USA: US trademark No. 0683990from August 25, 1959 (for international 7) and US trademark No. 1822348 from February 22, 1994 (for international classes 7 and 11).

The Complainant has registered the domain names <mahle.com>.

The Panel finds that the Complainant has proved its rights to registered the trademark “Mahle”. The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered trademark. The fact that the Disputed Domain Name includes a second word “performance”, in the Panel’s view, does not change the overall situation. Moreover, the fact that the Complainant’s website has a prominent heading “MAHLE – Driven by Performance” strengthens the confusing similarity.

In addition it has been well established that the addition of a generic term to a trademark in a domain name does not eliminate confusing similarity.

The Panel agrees with the Complainant’s arguments that the Disputed Domain Name could be directly associated in the mind of the consumers with the Complainant’s trademarks.

The Panel refers to a number of past UDRP decisions, which confirm that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002 and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd,WIPO Case No. D2000-0802 and many others).

The Panel finds that Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a Respondent’s rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.

The Respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i-iii) of the Policy. By not responding to the Complainant’s contentions the Respondent in this proceeding has never shown its rights or legitimate interests.

There is no evidence that before any notice of this dispute, the Respondent was using the Disputed Domain Name for a legitimate offer of goods and services. The Respondent does not use the Disputed Domain Name in connection with the bona fide offering of goods and services, according to the standards set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

According to the evidence submitted by the Complainant the Respondent used to sell Mahle pistons through its website under the slogan: “Mahle Performance: Ultra High Performance, Factory Direct Prices (Annex E to the Complaint).

Subsequent investigation of the Panel shows that the home page of the website under the Disputed Domain Name <mahleperfomance.com> displays a list of topics which, when clicked on, refer to various active websites. The website itself does not offer any goods or services, it provides merely links to other websites. The website does no longer offer pistons for sale under the slogan “Mahle Performance”. The Panel believes that this fact presents additional proof that the Respondent was not and is not involved in bona fide offering of goods and services.

Considering the circumstances, the Panel is of the opinion, that there is no plausible circumstance which would justify a legitimately use of the domain name <mahleperformance.com> by the Respondent.

Secondly, as for the Respondent’s proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the Disputed Domain Name.

The Panel considers that the mere fact of the Respondent indicating the name “Mahle Performance” as the registrant for the Disputed Domain Name does not present sufficient evidence that the Respondent is commonly known under this name.

The Respondent registered the Disputed Domain Name on August 25, 2005. The first trademark registration of the Complainant’s trademark “Mahle”AHLE dates back to 1958.

The Panel believes that the Respondent knew about the Complainant’s name and registered trademark “Mahle” at the time of the Disputed Domain Name’s registration.

Regarding these facts, it is the Panel’s view that the Respondent probably registered the Disputed Domain Name with the awareness of the Complainant’s products and its quality and reputation.

Furthermore, the Panel draws an adverse inference from the Respondent’s failure to respond to the Complaint.

The Panel finds the Complainant has carried out its burden of proof to show that the Respondent has no legitimate rights or interests in the Disputed Domain Name.

Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that the Respondent has registered and used a domain name in bad faith:

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

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

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

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

The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the Disputed Domain Name, according to the evidence submitted by the Complainant, was registered and has been used primarily for the purpose of confusing the public and diverting the public’s attention from the Complainant’s official website to the Respondent’s website for direct commercial gain in selling the pistons.

An independent subsequent search by the Panel proved that the home page of the website under the Disputed Domain Name <mahleperfomance.com> showed a list of topics displayed relating to the automobile industry and links to various other websites and webpages, all of which are types of websites described as “parking” sites.

The Panel finds that the Respondent’s website could have attracted potential attention from the public through the affiliation with the Complainant’s products and services. At the same time it could create a confusion with the Complainant’s product and trademark as to the source, sponsorship, affiliation or endorsement of the website. The Panel’s independent verification has shown that the Respondent continues to use the Disputed Domain Name in the same manner although without directly selling pistons associated with the Complainant’s name and trademark.

The Panel finds that the Complainant presented evidence that the Respondent was in violation of provisions of paragraph 4(b)(iv) of the Policy.

The Panel holds that the Respondent “has registered the Disputed Domain Name in bad faith”. The Respondent does not conduct any legitimate business activity using the Disputed Domain Name. The Respondent most likely knew of the Complainant’s product and should be aware of the trademark “Mahle”. These findings, together with the finding that the Respondent has no rights or interests in the Disputed Domain Name, lead the Panel to conclude that the Disputed Domain Name has been registered by the Respondent in bad faith.

The fact that the Respondent failed to respond to the Complaint, in the Panel’s view, may be additional proof of bad faith.

The Panel finds the Complainant has shown that the Respondent registered and is using the Disputed Domain Name in bad faith.

7. Decision

The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Policy. In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Disputed Domain Name <mahleperfomance.com> be transferred to the Complainant.

Irina V. Savelieva
Sole Panelist

Dated: April 18, 2005