The Complainant is Verband der Automobilindustrie e.V. - German Association of the Automotive Industry (“VDA”) of Birmingham, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Barker Brettell LLP, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Darren Millington, Millingtonautomotive Diagnostic Solutions LTD of Hong Kong, China.
The disputed domain name <adblueremoval.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2016. On July 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 July 22, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 27, 2016.
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 July 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2016. The Center received an email communication from the Respondent on July 28, 2016.
The Center appointed Knud Wallberg as the sole panelist in this matter on August 26, 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.
The Complainant was founded in 1901 in Germany under the name Verein Deutscher Motorfahrzeug-Industrieller, and changed its name to the current name “Verband der Automobilindustrie (VDA)”, in 1946. The Complainant has over 600 members who manufacture cars, trailers and buses as well as parts and accessories for the same.
ADBLUE is a registered trademark of the Complainant in over 40 countries around the world and is licensed particularly to car manufacturers, suppliers, and companies of the chemical and mineral oil industry. The Complaint owns, among others, the European Union trademark Registration No. 3945938 for ADBLUE, registered on June 2, 2006. Further, the Complainant asserts that the trademark ADBLUE has acquired extensive goodwill and a substantial reputation throughout Europe and the world and as a result, is a well-known mark throughout the same
The disputed domain name <adblueremoval.com> was registered on November 26, 2012.
The Complainant contends:
(i) that the disputed domain name is confusingly similar to the ADBLUE trademark in which it has rights. The disputed domain name incorporates the ADBLUE trademark in its entirety and differs from the trademark only by the addition of the generic term “removal”;
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant nor has the Respondent been authorized or allowed by the Complainant to make any use of its ADBLUE trademark;
(iii) that the disputed domain name was registered and used in bad faith. It is thus inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s trademark. Further, the disputed domain name is used for a website providing, inter alia, units which replace or remove the need for ADBLUE urea solution in the SCR system of vehicles and on which it is stated that the website supplies “official adblue removal units”. However, the Complainant does not supply such units and therefore such units cannot be “official” and the use of the cited wording on the website further enhances the risk of confusion on the part of consumers leading them to believe the disputed domain name is linked to the Complainant.
The Respondent did not formally reply to the Complainant’s contentions.
However, on July 28, 2016, an email was sent to the Center from the email address listed for the registrant of record in which the following was stated:
“Please accept our apologies for any inconvenience caused as we were not fully aware of the implications and litigations to such wording. Unfortunately website building tools for the masses does not train the novice website builder of such legal implications to wording. The websites ADBLUEREMOVAL.COM and DIAG-X.COM and domains will be released and shut down with immediate effect.
Please notify all relevant parties and i hope this draws a close to the complainant.
As far as the Respondent’s statement in the email, in which it indicated its willingness to “release” the disputed domain name is concerned, the Complainant stated the following in an email of August 4, 2016:
“Thank you for your email. I can confirm that the Complainant does not wish to enter into a suspension. However I understand from the mediator on co-pending proceedings in respect of the domain www.adblueremoval.co.uk that the Respondent has released this domain ready for transfer. Whilst this is appreciated, the Complainant is seeking cancellation of the domain, so if there is any way to speed up process for all concerned, please let us know.”
Since there is no “way to speed up the process” other than through suspension and Parties’ settlement, the Panel understands the above email from the Complainant to mean that it requests the Panel to decide the case. In such cases a UDRP panel has different possible courses to follow, as outlined in paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In the present case the Respondent’s reply is ambiguous and does clearly not assent to the claims put forward in the Complaint that the registration and use of the disputed domain name was done in bad faith as stipulated in paragraph 4(a) of the Policy and to the request that the disputed domain name be cancelled. Under such circumstances the Panel agrees with the panel in Research In Motion Limited v. Privacy Locked LLC / Nat Collicot, WIPO Case No. D2009-0320, that the Panel must satisfy itself that the three elements of paragraph 4(a) of the Policy are in fact present before granting the requested remedy. Considering all the circumstances of the present case, the Panel will therefore proceed to review the facts of the case and subsequently make a decision on the merits.
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel finds that the disputed domain name <adblueremoval.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark ADBLUE because it contains the mark in its entirety with the addition of the generic term “removal”. The generic Top-Level Domain “.com” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In reply, the Respondent indicated that it will release the domain name and shut down the website. Since sometime thereafter, the Panel notes that the disputed domain name resolves to the Registrar’s parking page containing pay-per-click links. The Panel finds that the Respondent’s reply and its voluntary takedown of the website may be telling of its lack of rights or legitimate interests.
Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use 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 that complainant, for valuable consideration in excess of the respondent’s 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 online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the previous use of the disputed domain name for a website that claimed to offer “official adblue removal units”, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain name with prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent by using the disputed domain name as described above intentionally attempted to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark.
Moreover, the disputed domain name is currently being used for a standardized pay-per-click parking site on which some of the sponsored listings appear to be offering products and services that are related to or in competition with the Complainant’s AdBlue product. The Panel therefore finds that the Respondent is still using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website as mentioned in terms of Policy paragraph 4(b)(iv).
The Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b)(iv) of the Policy are also fulfilled in this case.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel that the disputed domain name <adblueremoval.com> be cancelled.
Date: September 9, 2016
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