WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Bahn AG v. 1&1 Internet Limited / Johann Berger

Case No. D2017-2387

1. The Parties

The Complainant is Deutsche Bahn AG of Berlin, Germany, represented by Harte-Bavendamm, Germany.

The Respondent is 1&1 Internet Limited of Gloucester, United Kingdom of Great Britain and Northern Ireland ("United Kingdom") / Johann Berger of London, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <dbschenkerdigital.com> is registered with 1&1 Internet AG (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 4, 2017. On December 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2017, 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 11, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent a Request for Amendment by email to the Complainant. The Complainant filed an amended Complaint on December 14, 2017.

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 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 9, 2018.

The Center appointed Alexandre Nappey as the sole panelist in this matter on January 15, 2018. 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 Deutsche Bahn AG, the leading railway company in Germany, also active in the general logistic business through its subsidiary Schenker AG operating under the name and brand "DB SCHENKER".

The Complainant is the owner of numerous trademarks including the term "DB SCHENKER", among which:

- European trademark No. 6698047 "DB SCHENKER", registered on November 17, 2008 in classes 16, 20 and 39;

- German trademark No. 302008009777 "DB SCHENKER", registered on April 3, 2008 in classes 16, 20 and 39.

The disputed domain name <dbschenkerdigital.com> was registered on August 18, 2017. According to the evidence provided by the Complainant, the disputed domain name used to resolve to a website almost exactly mirroring the original website of the Complainant under <dbschenker.com>. At the time of the decision, the website at the disputed domain name does not appear to be active (it resolves to a 404 error page).

5. Parties' Contentions

A. Complainant

The Complainant first alleges that the disputed domain name <dbschenkerdigital.com> is confusingly similar to its earlier trademark "DB SCHENKER", which has got a high level of distinctiveness as "SCHENKER" is a family name.

The disputed domain name incorporates the Complainant's trademark "DB SCHENKER" in its entirety with the sole addition of the descriptive term "digital" which does not diminish confusing similarity but, on the contrary, suggests that the Complainant offers Internet or online services.

Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant has no relationship with the Respondent and has never authorized it to use its trademark "DB SCHENKER".

The Complainant alleges that its trademark is widely known and that it has been in the business for a considerable number of years before the Respondent registered the disputed domain name, whereas the Respondent is not commonly known by the disputed domain name.

Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

As the disputed domain name resolved to a website that is almost exactly mirroring the original website of the Complainant under <dbschenker.com>, the Respondent is clearly trying to falsely pretend that its website is owned by the Complainant, so as to attract users in order to generate traffic and to collect email addresses.

B. Respondent

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

6. Discussion and Findings

Notwithstanding the lack of response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate 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.

However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate".

Having evidenced to the Parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following:

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in "DB SCHENKER", which predate the registration of the disputed domain name <dbschenkerdigital.com>.

The Panel finds that the disputed domain name is confusingly similar to the registered "DB SCHENKER" trademark owned by the Complainant.

Indeed, the disputed domain name incorporates the entirety of the Complainant's "DB SCHENKER" trademark with the mere addition of the descriptive word "digital" which can directly refer to the Complainant's online activities and does not whittle confusing similarity.

Other UDRP panels have repeatedly held that the addition of a generic word to a recognized mark creates a confusing similarity between the domain name and the mark of the complainant. See for instance Dr. Ing. h.c. F. Porsche AG v. Dealer Dot Com, Inc., WIPO Case No. D2016-1900 about <porschedigital.com> (transfer).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances are situations that can demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the respondent] has acquired no trademark or service mark rights; or

(iii) [the respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering the difficulty to demonstrate a negative, UDRP panels generally find it is sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its "DB SCHENKER" trademark.

It results from the circumstances that the Respondent does not own any right on the trademark "DB SCHENKER" or is commonly known by the disputed domain name.

On the contrary, as stated in the complaint, and not contested, the Respondent has been trying to impersonate the Complainant's website. However, at the time of the decision, the disputed domain name is pointing to an error page.

See in similar circumstances, Corker Binning v. Mena Dre, WIPO Case No. D2017-2196, HACKETT, S.A.R.L. v. Mika Harms, Hackett Shop UK, WIPO Case No. D2017-2114.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

It provides that:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."

Since "DB SCHENKER" is a distinctive trademark which was registered in 2008 whereas the disputed domain name was registered only in 2017 and there is no evidenced relationship between the Parties, it may be inferred that the Respondent was aware of the Complainant's trademark at the time it registered the disputed domain name <dbschenkerdigital.com>.

Considering the printouts submitted by the Complainant, the Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the "DB SCHENKER" trademarks as the Respondent has used the disputed domain name in connection with a website reproducing the Complainant's official website's look and feel.

As to bad faith use, by fully incorporating the "DB SCHENKER" trademark into the disputed domain name and by using such domain name in connection with a website mirroring the Complainant's website, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy.

The disputed domain name is not resolving to an active website at the time of the decision. However, the consensus view amongst UDRP panels is that "the use of a domain name including a blank page or 'coming soon' page would not prevent a finding of bad faith under the doctrine of passive holding". See section 3.3 of the WIPO Overview 3.0.

In this case, the fact that the disputed domain name has been used to resolve to a copy of the Complainant's main website, likely to phish Internet users, leads the Panel to consider unconceivable that any future use of the disputed domain name might be in good faith.

Furthermore, the Respondent did not reply to various notices sent by the Complainant prior to the proceedings to cease and desist from using the disputed domain name, which further suggests bad faith.

The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.

The Panel finds that the above described circumstances constitute registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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 <dbschenkerdigital.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: January 29, 2018