The Complainant is Dekra e.V. of Stuttgart, Germany, represented by Uexkull & Stolberg, Germany.
The Respondent is datadomain.xyz Data, ABC Domain of New York, Alabama, United States of America.
The disputed domain name <dekra.xyz> is registered with NameCheap, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 23, 2015. On November 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 of the Complaint, and the proceedings commenced on December 2, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 23, 2015.
The Center appointed Ian Blackshaw as the sole panelist in this matter on January 4, 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 is one of the world's leading expert organisations and the world's largest vehicle testing provider. Its main tasks include the periodic inspection of motor vehicles (general inspection including emissions testing), expert appraisals, safety inspections and the inspection of technical systems.
The Complainant currently maintains a presence in 50 countries in Western and Eastern Europe, as well as in the United States of America, Brazil, North and South Africa, Israel, Japan and China. The Complainant provides services in the fields of vehicle inspections, expert appraisals, international claims management, consulting, industrial testing, product testing, certification, environmental protection, qualification, temporary work as well as out and new placement.
In Germany, the Complainant maintains 480 own branches and is conducting regular inspections of motor vehicles in more than 38.000 work stations. The Complainant generated sales of around EUR 2.5 billion in 2014 and currently employs around 35,000 people in more than 50 countries.
The Complainant is, inter alia, the owner of the following trademarks:
- German mark 30751663 DEKRA ALLES IM GRÜNEN BEREICH with priority of August 7, 2007;
- German mark 30 2009 075 864 DEKRA ON THE SAFE SIDE with priority of December 24, 2009; and
- German mark 2014 008 138 DEKRA with priority of November 18, 2014.
All of these trademarks are registered for a wide range of goods and services, in particular in classes 41 and 42.
All of them have been and are being intensively used by the Complainant and its subsidiaries.
Furthermore, the DEKRA mark has been used for decades as a business designation.
The disputed domain name was registered on August 16, 2015.
The Complainant makes the following assertions:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar to the DEKRA trademarks and the business designation in which the Complainant has rights. The disputed domain name coincides with the distinctive component "dekra".
The new generic Top-Level Domain ("gTLD") ".xyz" is of general application and has no distinctive meaning of its own. Furthermore, the generic meaning of gTLDs is not taken into account for the purposes of determining confusing similarity under the Policy.
As such, the disputed domain name is confusingly similar to the Complainant's registered mark DEKRA for the purposes of the Policy.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent cannot claim any rights to or legitimate interests in the disputed domain name according to paragraph 4(c)(i) of the Policy because it had not used or prepared to use the disputed domain name in connection with a bona fide offer of goods and services.
The Respondent is neither a licensed or authorized dealer of the Complainant, nor any other person who belongs to the Complainant's group.
The Complainant has never instructed or authorized the Respondent to register or use the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith.
The disputed domain name has been registered and used in bad faith by the Respondent.
At the time of registration of the disputed domain name, the trademark DEKRA was well known in Europe, in particular in Germany, and worldwide for a long time. The recent registration of the disputed domain name containing the trademark of the Complainant interferes with the Complainant's business.
The Respondent is also using the disputed domain name in bad faith. The Complainant primarily relies upon paragraph 4(b)(i) of the Policy. The Respondent registered the disputed domain name primarily for the purpose of selling the disputed domain name for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name.
Under the disputed domain name, the Respondent's advertising reads as follows:
"DEKRA.XYZ IS FOR SALE"
According to the searches made by the Complainant, the Respondent owns 2,933 domains, and, therefore, appears to be involved in the business of registering and reselling domain names for a profit. These circumstances demonstrate that the Respondent intended, from the date of registration, to sell the disputed domain name. The Respondent's offer to sell the disputed domain name is made to the public. It goes without saying that a potential purchase price would be expected to exceed the out-of-pocket costs directly related to the disputed domain name.
This constitutes bad faith pursuant to paragraph 4(b)(i) of the Policy.
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in these proceedings.
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the panel, the panel shall proceed to a decision on the complaint; and under 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 as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondents failed to file a response, the panels' decisions were based upon the complainants' reasonable assertions and evidence, as well as inferences drawn from the respondents' failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel, S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140. In the present case, the Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.
It is well established in previous UDRP decisions that, where the domain name incorporates a complainant's registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The disputed domain name incorporates the Complainant's DEKRA trademark, which makes the disputed domain name confusingly similar to this mark. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its DEKRA trademark.
The Panel agrees with the Complainant's contention that the addition of the gTLD ".xyz" to the disputed domain name does not avoid confusing similarity. See The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031.
In view of all of the above, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant's DEKRA trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights.
The first element of the Policy, therefore, has been met.
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether there is any evidence of 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 before any notice to the Respondent of the dispute;
- whether 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;
- whether 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.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint or taking any part in the present proceedings. See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In the view of the Panel, the adoption by the Respondent of a domain name identical or confusingly similar to the Complainant's DEKRA marks inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services. Further, the Panel finds that the Respondent is trading unfairly on the Complainant's DEKRA marks and also the valuable goodwill that the Complainant has established in these trademarks through prior commercial use.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all of the above reasons and also those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute prima facie evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.
Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating as a dominant part thereof the Complainant's DEKRA trademark, is trading unfairly on the Complainant's valuable goodwill established in such trademark. See Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that "consumers expect to find a company on the Internet at a domain name address comprised of the company's name or trademark". As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.
Also, the Panel finds that the Respondent's use of the disputed domain name which has the effect of redirecting Internet users interested in the Complainant's products to its own website for presumed commercial gain not only does not constitute legitimate noncommercial or fair use; but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd./ Mr.Cartwright, WIPO Case No. D2007-0267.
Furthermore, as mentioned by the Complainant, the disputed domain name resolves to a website that prominently displays the statement that the disputed domain name is for sale. The Complainant also mentions that the Respondent owns 2,933 domain names. The Panel would agree with the Complainant's assertion that, in these circumstances, the Respondent appears to be in the business of registering and reselling domain names for profit, including the disputed domain name. Pursuant to the provisions of paragraph 4(b)(i) of the Policy, this is further evidence of bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent (see Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.
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, <dekra.xyz>, be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Date: January 6, 2016