WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
thyssenkrupp AG v. Shen Zhong Chao
Case No. D2018-1410
1. The Parties
The Complainant is thyssenkrupp AG of Essen, Germany, internally represented.
The Respondent is Shen Zhong Chao of Beijing, China.
2. The Domain Names and Registrar
The disputed domain names <thyssenkrupp-tata.net> and <thyssenkrupptatasteel.net> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 27, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both disputed domain names and providing the contact details. On June 28, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on June 29, 2018. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on July 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on July 31, 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 a diversified industrial group and steel producer with business and operating units in 78 countries. It was formed by the merger of Thyssen AG and Krupp that was completed in 1999. The Complainant owns multiple trademark registrations for THYSSENKRUPP including international trademark registrations numbers 713857 and 731636 registered on April 29, 1999 and July 7, 1999, respectively, both designating multiple jurisdictions, including China, and specifying goods and services in multiple classes. Those trademark registrations remain current. Reports of a possible merger between the Complainant and the Indian multinational steelmaker Tata Steel Limited appeared in news media in 2016. The Complainant and Tata Steel Limited later signed a memorandum of understanding to combine their European steel activities in a joint venture to be named “ThyssenKrupp Tata Steel”, which was announced by various news media outlets on September 20, 2017.
The Respondent is an individual resident in Beijing. Previous panels in administrative proceedings under the Policy have found that the Respondent registered and was using domain names in bad faith. See, for example, Compagnie Générale des Etablissements Michelin v. Shen Zhong Chao,
WIPO Case No. D2016-0408; Standard Life Employee Services Limited v. Shen Zhong Chao,
WIPO Case No. D2017-1114; Klarna Bank AB v. Shen Zhong Chao,
WIPO Case No. D2017-2491; and Thyssenkrupp AG v. Shen Zhong Chao,
WIPO Case No. D2017-2170. The last-mentioned proceeding concerned a complaint filed by the Complainant in the present proceeding regarding the domain name <thyssenkrupp-tata.com>, which the Respondent registered on October 17, 2017.
The disputed domain names in the present proceeding were created on September 20, 2017. Each of them resolves to a landing page in Chinese and English which announces that “the domain is for sale!” The contact person in each case is the Respondent.
5. Parties’ Contentions
A. Complainant
The disputed domain names are confusingly similar to the Complainant’s THYSSENKRUPP trademark. The distinctive element of the disputed domain names is identical to the Complainant’s trademark and company name.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent has never sought or obtained trademark registrations that correspond with the disputed domain names. The Respondent has never been authorized to register or use any of the Complainant’s trademarks. The Respondent has no connection at all with the Complainant or its affiliates.
The disputed domain names were registered and are being used in bad faith. Considering the Complainant’s reputation and market presence, the Respondent must have been aware of the Complainant and its intended merger with Tata Steel Limited at the time that he registered the disputed domain names. The Respondent has engaged in a pattern of conduct of registering domain names that incorporate the names of well-known companies that have recently merged or that are about to merge. The term “thyssenkrupp” has no meaning in any language. The disputed domain names resolve to a website where they are offered for sale.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent has registered many domain names that incorporate the names of international companies, many of which are about to merge, which indicates that the Respondent closely monitors economic news worldwide. The Respondent has engaged in correspondence in English with complainants prior to previous proceedings under the Policy. The panel in a previous proceeding under the Policy between the Parties determined that English was the appropriate language of that proceeding. Translation of the Complaint into Chinese would create a burden for the Complainant and an unnecessary delay.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,
WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,
WIPO Case No. D2008-0293.
The Panel observes that in the present proceeding the Complaint was filed in English. The Panel notes that the Respondent engaged in pre-complainant correspondence in English in at least two previous administrative proceedings under the Policy, which demonstrates that he is able to communicate in that language. Moreover, the Respondent has not expressed any interest in responding to the Complaint or otherwise participating in the present proceeding. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English.
6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the trademark THYSSENKRUPP.
Each of the disputed domain names wholly incorporates the trademark THYSSENKRUPP as its initial element. They both also include the name “tata”, either preceded by a hyphen or followed by the word “steel”. The word “steel” is a mere dictionary word. The trademark THYSSENKRUPP remains clearly recognizable within both disputed domain names. The Panel does not consider that any of these additional elements dispel the confusing similarity with the Complainant’s trademark.
Both disputed domain names include the Top-Level Domain (“TLD”) suffix “.net”. A TLD suffix may generally be disregarded in a comparison with a trademark for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
“(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 non-commercial 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.”
The Panel has already found that the disputed domain names are confusingly similar to the Complainant’s THYSSENKRUPP trademark. The Complainant states that the Respondent has never been authorized to register or use any of the Complainant’s trademarks and that the Respondent has no connection at all with the Complainant or its affiliates. The Panel notes that “thyssenkrupp” is not a dictionary word. Each of the disputed domain names resolves to a landing page that merely offers it for sale. These circumstances show that the Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services for the purposes of the Policy. The Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
The Respondent’s name is “Shen Zhong Chao” not “thyssenkrupp”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by the second circumstance of paragraph 4(c) of the Policy.
Each of the disputed domain names resolves to a landing page that offers it for sale. That is not a legitimate noncommercial or fair use of the disputed domain names within the terms of the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent did not rebut that case because he did not respond to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The second of these is as follows:
“(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.”
With respect to registration, the Panel observes that the disputed domain names wholly incorporate the Complainant’s THYSSENKRUPP trademark, which is not a dictionary word. The disputed domain names were not registered until many years after the registration of the THYSSENKRUPP trademark. The Respondent registered the disputed domain names, which combine the Complainant’s THYSSENKRUPP trademark with the element “-tata” or “tata steel”, after press reports that the Complainant and Tata Steel Limited were discussing, or had already announced, a joint venture. The Panel does not believe that this can have been coincidental. Therefore, the Panel finds that the Respondent deliberately chose to register the disputed domain names in bad faith.
With respect to use, the Panel notes that each of the disputed domain names resolves to a landing page that merely offers it for sale. Each of the disputed domain names combines the Complainant’s THYSSENKRUPP trademark with the element “-tata” or “tata steel” when the Complainant and Tata Steel Limited have announced a joint venture to be named “ThyssenKrupp Tata Steel”. The Respondent previously registered and used other domain names in bad faith in a similar way. For example, he registered <michelin-fives.com> after Michelin and Fives entered into a joint venture in 2016: see Compagnie Générale des Etablissements Michelin v. Shen Zhong Chao, supra; he registered <standard-aberdeen.com> and <aberdeen-standard.com> after Standard Life plc and Aberdeen Asset Management plc announced a potential merger in 2017: see Standard Life Employee Services Limited v. Shen Zhong Chao, supra; and he registered <thyssenkrupp-tata.com> after the Complainant and Tata Steel Limited announced a joint venture in October 2017: see Thyssenkrupp AG v. Shen Zhong Chao, supra. This constitutes a pattern of conduct. The Panel finds that the facts of this case fall within the circumstances set out in paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in 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 names <thyssenkrupp-tata.net> and <thyssenkrupptatasteel.net> be transferred to the Complainant.
This order is made without prejudice to any rights that Tata Steel Limited may have in the disputed domain names.
Matthew Kennedy
Sole Panelist
Date: August 5, 2018
