The Complainant is Deutz AG. of Cologne, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America (“United States”) / Mustafa Gunduz of Istanbul, Turkey.
The disputed domain name <stardeutz.com> is registered with Aerotek Bilisim Taahut Sanayi Ve Ticaret Ltd Sti. (the “Registrar”).
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2018, 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 September 20, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 21, 2018.
Pursuant to the Complaint submitted in English and the registrar verification dated September 19, 2018 stating that Turkish is the language of the registration agreement of the disputed domain name, on September 20, 2018, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On September 21, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 Turkish of the Complaint, and the proceedings commenced on September 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2018.
The Center appointed Kaya Köklü as the sole panelist in this matter on October 25, 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.
The Complainant is an engine manufacturer based in Germany. The Complainant was founded in 1864 and manufactures and internationally distributes diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment.
The Complainant is the owner of various DEUTZ trademarks, registered in a large number of jurisdictions. According to the documents submitted by the Complainant, the Complainant is, inter alia, the registered owner of the International Trademark Registration No. 739507, registered on March 30, 2018 (i.a. registered in Turkey on January 21, 2002). The first German trademark applications comprising the word mark DEUTZ (e.g. No. 257717) date back to the 1920s.
The Complainant also owns and operates various domain names, which incorporate the trademark DEUTZ, such as <deutz.com> or <deutz.com.tr>.
The Respondent is an individual from Istanbul, Turkey.
The disputed domain name was registered on October 7, 2016.
The screenshots, as provided by the Complainant (cf. Annexes 10 and 11), show that the disputed domain name resolves to a website in English, where the Respondent offers spare parts that apply to engines and other products of the Complainant and also other companies as well. Furthermore, it can be seen on the provided screenshots that the Respondent uses the DEUTZ word mark of the Complainant without publishing any visible disclaimer describing the (non-existent) relationship between the Parties.
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its DEUTZ trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s DEUTZ trademark, when registering and using it as a distinctive part of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant, while the Respondent has failed to raise any objection or even to respond to the Complaint or respond to the Center’s communication about the language of the proceedings, even though communicated in Turkish and in English. The Panel also notes that the Respondent offers its products on the website linked to the disputed domain name in English (cf. Annex 11). By doing so, it is in view of the Panel obvious that the Respondent is well capable to read, understand and probably also write in English.
In light of the above, the Panel concludes that the Respondent will not be prejudiced by a decision being rendered in English.
Hence, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.
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.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint’s contentions. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See, section 2.1 of the
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
The Panel finds that the Complainant has registered trademark rights in the mark DEUTZ by virtue of various trademark registrations (cf. Annex 5).
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered DEUTZ trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would generally not prevent a finding of confusing similarity. The mere addition of the term “star” does in view of the Panel not serve to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s DEUTZ trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any relevant evidence to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark DEUTZ in a confusingly similar way within the disputed domain name.
In the absence of a Response, there is no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name.
The Panel particularly notes that the website which is linked to the disputed domain name does not adequately disclose the relationship, or rather the lack thereof, between the Respondent and the Complainant, thus creates the false impression that the Respondent might be an official and authorized provider of (genuine) spare parts for products of the Complainant in Turkey. Additionally, the Panel notes that the Respondent offers spare parts for products not only of the Complainant but also of various other well-known truck and engine manufacturers.
In view of the Panel, this takes the Respondent out of any conceivable Oki Data safe harbour for purposes of the second element. See, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent must have had the Complainant’s DEUTZ trademark in mind when registering the disputed domain name.
It even appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant and its products. The Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own website. The Panel notes that the Respondent has not published any visible disclaimer on the websites linked to the disputed domain name to explain that there is no existing relationship between the Respondent and the Complainant. Quite the opposite, the Panel believes that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s DEUTZ trademark as to the source, sponsorship, affiliation or endorsement of its website.
Consequently, it is in view of the Panel apparent that the Respondent does not meet the Oki Data principles on various elements.
Furthermore, the Panel finds that the Respondent’s failure to respond to the Complainant’s contentions also supports the conclusion that it has registered and is using the disputed domain name in bad faith. The Panel believes that, if the Respondent did in fact have legitimate purposes in registering and using the disputed domain name, it would have probably responded.
The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <stardeutz.com> be transferred to the Complainant.
Date: November 13, 2018
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