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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DEUTZ AG v. Registration Private, Domains By Proxy, LLC / Aditya Roshni, Web Services Pty

Case No. D2016-0106

1. The Parties

1.1 The Complainant is DEUTZ AG of Cologne, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany (the “Complainant”).

1.2 The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States” or “US”) and Aditya Roshni, Web Services Pty of New Delhi, India (individually and collectively, the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <deutzengine.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2016. On January 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 20, 2016, 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 January 22, 2016 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 January 25, 2016.

3.2 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”).

3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 17, 2016.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on February 24, 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.

4. Factual Background

4.1 The Complainant is stated to be a well-known engine manufacturer, based in Cologne, Germany. The Complainant was established in 1864 and currently manufactures and distributes worldwide, diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment. The Complainant is also the owner of many international trademark registrations, namely: (i) IR No. 158321: DEUTZ; (ii) IR No. 174094: DEUTZ; (iii) IR No. 290367 DEUTZ (figurative); (iv) IR No. 452600: DEUTZ; (v) IR No. 739507: DEUTZ (figurative); and (vi) US No. 7891947 DEUTZ (figurative). The Complainant’s trademarks and the designation DEUTZ are also said to be protected in the US where the Respondent is located. Furthermore, it is stated that the designation “DEUTZ” is also the company name of the Complainant which was incorporated under this trade name in July 1884. The Complainant promotes its engines on its website “www.deutz.com” in both the German and English languages and sells its products and services related to engines all over the world including in the US where the Respondent is located. The Complainant is said to have a very strong sales and services network with more than 150 distributors and service partners.

4.2 The first Respondent is a proxy registration service while the second Respondent, the underlying Registrant, is based in New Delhi India. According to the WhoIs database the Respondent created the Disputed Domain Name on November 21, 2002.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the Disputed Domain Name <deutzengine.com> is clearly confusingly similar to the Complainant’s trademark as it fully incorporates the Complainant’s marks and trade name, namely the DEUTZ mark. The Complainant argues that the addition of a generic, descriptive word such as “engine” does nothing to prevent a finding of confusing similarity under the first element of the UDRP. The Complainant relies on a number of previous UDRP decisions in this regard, in particular Deutz AG v. tianyulong, WIPO Case No. D2014-0430, where the panel held that the addition of descriptive terms such as the generic word “service” does not prevent a finding of confusing similarity.

5.2 On the question of rights or legitimate interests, the Complainant further contends that the Respondent does not possess any registered trademarks or trade names corresponding to the Complainant’s mark DEUTZ or the Disputed Domain Name. The Complainant asserts further that the Respondent has failed to provide any evidence of a licence or authorization of any kind given by the Complainant. Equally, it is submitted that mere registration of the Disputed Domain Name does not bestow on the Respondent a right or legitimate interest in respect of the Disputed Domain Name. The Complainant states further that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services; instead, the Respondent has intentionally chosen a domain name which is similar to the trade name of the Complainant in order to generate Internet traffic to sites with sponsored links for commercial gain. See in this regard LEGO Juris A/S v. J.h.Ryu, WIPO Case No. D2010-1156. The Complainant states further that the Respondent’s lack of rights or legitimate interests is further supported by the Respondent’s reliance on a privacy registration service.

5.3 With regards to bad faith registration and use the Complainant submits that the Respondent registered the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out of pocket expenses directly associated with the registration of the Disputed Domain Name. Secondly, it is submitted that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Thirdly, the Complainant submits that the Respondent was clearly aware of the Complainant’s prior rights in the DEUTZ trademarks, which were registered long before the Respondent registered the Disputed Domain Name. Fourthly, the Respondent offers sponsored links related to engines, spare parts and engine parts at the website under the Disputed Domain Name, some of which contain links to products of manufacturers directly competing with the Complainant’s engines.

B. Respondent

5.4 The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to succeed, namely that:

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

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

(iii) the Respondent has registered and is using the Disputed Domain Name in bad faith.

A. Identical or Confusingly Similar

6.2 The Panel is satisfied that the Complainant has long owned rights in the DEUTZ trademark, possibly since its incorporation under this name in 1884, and is a well-known engine manufacturer with contractual partners and distributors all over the world. The Complainant’s numerous submissions attached as annexes to the Complaint clearly supports this finding. The Panel has therefore without any difficulty found that the Disputed Domain Name <deutzengine.com> is confusingly similar to the Complainant’s trademark. Undoubtedly, the Disputed Domain Name incorporates fully the Complainant’s DEUTZ mark. The Panel is also satisfied that the addition of the generic word “engine” does absolutely nothing to preclude a finding of confusing similarity, following Deutz AG v. tianyulong, supra. More significantly, as argued by the Complainant, the addition of the generic word “engine” to the Disputed Domain Name also emphasizes an association between the Complainant’s trademark, a famous trademark for engines and engine parts, and the Disputed Domain Name in the minds of Internet visitors. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

6.3 The Panel finds that the Respondent has failed to provide any evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name. In essence, there is no evidence of a business relationship between the Respondent and the Complainant. Nor is there evidence of authorization or a licensing regime permitting the Respondent to use the Complainant’s trademarks or service marks in a domain name or otherwise. Crucially, there is in addition no evidence that the Respondent has used or is preparing to use the Disputed Domain Name for a bona fide offering of goods or services. Instead, the Respondent has chosen the Disputed Domain Name in order to generate traffic to websites with sponsored links related to the Complainant’s business contrary to the decision in LEGO Juris A/S v. J.h.Ryu , supra. As further argued by the Complainant, the Panel finds that the Respondent’s reliance on a privacy registration service is further evidence of a lack of rights or legitimate interests in the Disputed Domain Name. In the circumstances, the Panel is satisfied that the Complainant has established the required elements specified in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.4 On the question of bad faith registration and bad faith use, the Panel finds that it is inconceivable that the Respondent could not have been aware of the Complainant’s worldwide established prior rights in the DEUTZ trademark before registering the Disputed Domain Name in the year 2002 as revealed in the WhoIs database report. The Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith. Secondly, the Panel finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. As argued by the Complainant, whether the Respondent is using the Disputed Domain Name to generate Internet traffic to websites with sponsored links likely to be competitors of the Complainant or for commercial gain by earning pay per click revenue, it is clear that the Respondent is exploiting the reputation and prestige of the Complainant’s well-known DEUTZ trademark and on any view, such activity is tantamount to bad faith use. Thirdly, the Complainant has adduced cogent evidence consisting of emails exchanged between the Respondent and the Complainant’s agent demonstrating that the Respondent has registered the Disputed Domain Name for the purpose of selling it to the Complainant at an exaggerated sales price. The Respondent is recorded to have requested the sum of USD 10,000 for the Disputed Domain Name, which undoubtedly exceeds the Respondent’s out of pocket expenses initially incurred for creating the Disputed Domain Name. The Panel finds such conduct to be evidence of bad faith use within the ambit of paragraph 4(b)(i) of the Policy. Fourthly, the Panel finds the Respondent’s failure to respond to the Complaint, as further evidence of bad faith. The Panel is therefore satisfied that the Complainant has established the elements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 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 <deutzengine.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Date: March 7, 2016

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