WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Voith GmbH & Co. KGaA v. Guang Nian Chen, Chen Guang Nian

Case No. D2020-2099

1. The Parties

Complainant is Voith GmbH & Co. KGaA, Germany, represented by Bardehle Pagenberg, Germany.

Respondent is Guang Nian Chen, Chen Guang Nian, China.

2. The Domain Name and Registrar

The disputed domain name <voithchina.com> (the “Domain Name”) is registered with DevilDogDomains.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2020. On August 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the Registrar information, Complainant filed an amendment to the Complaint on August 13, 2020.

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 Respondent of the Complaint, and the proceedings commenced on August 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 4, 2020.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on September 22, 2020. 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

Complainant is a Germany based company, active in energy, oil and gas, paper, raw materials and transport and automotive industries. Founded in 1867, Complainant currently employs more than 20,000 people, operating in about 60 countries and generates EUR 4.3 billion in sales.

Complainant is the owner of several trademark registrations for the mark VOITH in a number of jurisdictions, including the following International registrations:

- International Trademark Registration Number 405353, registered on December 7, 1973;
- International Trademark Registration Number 178950, registered on August 20, 1954; and
- International Trademark Registration Number 447007, registered on August 22, 1979.

Complainant is also the owner of several VOITH trademark registrations in China where Respondent is located, including:

- Chinese Trademark Registration Number 559833, registered on July 30, 1991;
- Chinese Trademark Registration Number 137009, registered on May 5, 1980.
- Complainant also owns a large number of domain names incorporating the mark VOITH including: <voith.com>, <voith.asia>, <voith.cn>, <voith.com.cn>, <voith.hk>, <voith.org.cn>, and <voith.china>.

Respondent registered the Domain Name on May 28, 2020. The Domain Name resolves to a website displaying a sign “UNIS 紫光”, and companies information related to 紫光集团 (Tsinghua Unigroup), 紫光股份有限公司 (Unisplendour Gorporation) and AG8试玩有限公司 (AG8 Shi Wan Ltd. Co.), and their products such as 软件产品及系统集成 (software and system integration) and 刻录光盘 (CDs and DVDs). For example, when the user clicks on the link “刻录光盘” on the website, it displays related products and also a link at Tmall for online shopping.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the Domain Name is confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the Domain Name; and (iii) Respondent registered and is using the Domain Name in bad faith.

In particular, Complainant contends that it has trademark registrations for the VOITH marks and owns many domain names incorporating the VOITH mark. Complainant contends that Respondent registered and is using the Domain Name, which incorporates Complainant’s VOITH mark in its entirety, with an added geographical term “china”, to confuse Internet users looking for bona fide and well-known Voith products and services. Complainant notes that it has no affiliation with Respondent, nor authorized Respondent to register or use a domain name, which includes Complainant’s mark, and that Respondent has no rights or legitimate interests in the registration and use of the Domain Name. Rather, Complainant contends that Respondent has acted in bad faith in acquiring and setting up the Domain Name, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name was registered and is being used in bad faith.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of its rights in the VOITH marks, which have been registered since at least as early as 1954, well before Respondent registered the Domain Name on May 28, 2020. Complainant has also submitted evidence which supports that VOITH is a widely known trademark and a distinctive identifier of Complainant’s products. Complainant has therefore proven that it has the requisite rights in the mark VOITH. With Complainant’s rights in the VOITH marks established, the remaining question under the first element of the Policy is whether the Domain Name, typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered (in this case, “.com”), is identical or confusingly similar to Complainant’s mark. See, e.g., B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842.

Here, the Domain Name is confusingly similar to Complainant’s VOITH trademark. This mark, which is fanciful and inherently distinctive, is completely incorporated in the Domain Name. The voluntary addition of the term “china” in relation to the VOITH mark in the Domain Name, <voithchina.com>, does not prevent a finding of confusing similarity between Complainant’s trademarks and the Domain Name registered by Respondent.

Thus, Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

From the record in this case, it is evident that Respondent was, and is, aware of Complainant and the VOITH marks, and does not have any rights or legitimate interests in the Domain Name. Complainant has confirmed that Respondent is not affiliated with Complainant, or otherwise authorized or licensed to use the VOITH trademarks or to seek registration of any domain name incorporating the trademarks.

In addition, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that the Domain Name resolves to a website displaying information of various companies and their products (including at least a link for online shopping). Such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use and cannot under the circumstances confer on Respondent any rights or legitimate interest in the Domain Name. See, e.g., Intesa Sanpaolo S.p.A. v. Charles Duke / Oneandone Private Registration, WIPO Case No. D2013-0875. Moreover, there is no evidence showing that Respondent has been commonly known by the Domain Name.

Further, the nature of the Domain Name carries a risk of implied affiliation with Complainant (see WIPO Overview 3.0, section 2.5.1).

Accordingly, Complainant has provided evidence supporting its prima facie claim that Respondent lacks any rights or legitimate interests in the Domain Name. Respondent has failed to produce countervailing evidence of any rights or legitimate interests in the Domain Name. Thus, the Panel concludes that Respondent does not have any rights or legitimate interests in the Domain Name and Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Respondent’s actions indicate that Respondent registered and is using the Domain Name in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:

“(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 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 your website or location or of a product or service on your website or location.”

The Panel finds that Complainant provided ample evidence to show that registration and use of the VOITH marks long predate the registration of the Domain Name by Respondent. Complainant is also well established and known worldwide, including China, where Respondent resides. Therefore, Respondent was likely aware of the VOITH marks when he registered the Domain Name, or knew or should have known that the Domain Name was identical or confusingly similar to Complainant’s mark. See WIPO Overview 3.0, section 3.2.2; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Under the circumstances, Respondent’s registration of the Domain Name incorporating Complainant’s widely-known VOITH trademark in its entirety with an additional term “china” suggests that Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the VOITH mark, in an effort to opportunistically capitalize on the registration and use of the Domain Name.

The Panel therefore finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith. See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks.

As discussed above, the Domain Name resolves to a website displaying a sign “UNIS 紫光”, and information related to various companies and their products including at least a link for online shopping. Therefore, the Panel finds that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website.

Further, there is evidence in the record showing that Respondent has registered a broad range of domain names that incorporate third-party trademarks. In addition to the circumstances referred to above, Respondent’s failure to file a response and the undelivered Written Notice to Respondent due to false contact details are further indicative of Respondent’s bad faith.

Accordingly, the Panel finds that Respondent has registered and used the Domain Name in bad faith and Complainant succeeds under the third element 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 Domain Name <voithchina.com> be transferred to Complainant.

Kimberley Chen Nobles
Sole Panelist
Date: October 6, 2020