The Complainant is Deutz AG of Cologne, Germany, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Tang Rong Liang of Kunming, Yunnan, China.
The disputed domain name <deutz-yunnan.com> (the "Domain Name") is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 9, 2016. On February 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 14, 2016, 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.
On February 16, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in both Chinese and English, and the proceeding commenced on February 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 16, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on March 23, 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 a well-known engine manufacturer, founded in 1864 and based in Cologne, Germany. The Complainant manufactures and distributes worldwide diesel engines and engine components for agricultural machinery, marine propulsion, automobiles and construction equipment all over the world including China. The Complainant has a large sales and service network with subsidiaries, contractual partners and distributors all over the world. In China, the Complainant's subsidiary is Deutz (Beijing) Engine Ltd. In addition it has about fifteen official distributors acting for the Complainant in China.
The Complainant trades under the DEUTZ trade mark. It has trade mark registrations in various territories including in China. In addition, the Complainant also uses the DEUTZ trade mark together with a tower logo ("the Logo"). It has trade mark registrations for DEUTZ and the Logo as well. The earliest trade mark registration submitted in evidence dates back to 1928.
The Complainant has registered a large number of domain names incorporating the mark DEUTZ including <deutz.com>, <deutz.de>, <deutz.cn>, <deutz-china.com> and <deutz-engines-china.com>.
The Respondent registered the Domain Name on July 31, 2015. The Domain Name is connected to a website ("the Website") that promotes the products and services of Kunming Zhiping Trading Company. It bears the Complainant's DEUTZ and Logo trade mark on the web page. It purports to offer Deutz diesel engine parts, provide Deutz diesel engine maintenance service and technical guidance of specialized companies. It also purports to be a Deutz authorized parts distributor in Yunnan Province and designated service station.
The Complainant contends that the Domain Name is identical or confusingly similar to the DEUTZ trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in the Complaint and in an email of February 16, 2016, that the language of the proceeding should be English. The Complainant contends amongst other things that the Complainant and its representatives are unable to communicate in Chinese. Requiring them to submit the documents in Chinese would cause delay and added expense. The Respondent uses the name "Kunming Zhiping Trading Company" on the Website which indicates that he/she is able to communicate in English. There are also various headings on the Website in English.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
The Panel accepts that the Complainant has rights to the trade mark DEUTZ through use and registration that predates the Domain Name.
The Domain Name integrates the Complainant's registered trade mark DEUTZ with the addition of a hyphen, the geographical name, Yunnan, where he/she appears to be based and the generic Top-Level Domain ("gTLD") ".com". For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. Further, the addition of a hyphen and a geographical name as a suffix does not negate the confusing similarity encouraged by the Respondent's complete integration of the DEUTZ trade mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the DEUTZ trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
The Complainant contends that the Respondent does not have any registered trade marks, trade names nor personal names corresponding to Deutz or the Domain Name. Neither the Respondent nor the trading entity Kunming Zhiping Trading Company has any connection or relationship with the DEUTZ trade mark. The Complainant has not granted any licence or authorization to use the Domain Name. Further the Respondent is not using the Domain Name in connection with a bona fide offering of goods and services. The Website bears the DEUTZ and Logo trade mark giving the impression that it is an authorized distributor or seller and service center of the Complainant. It also purports to be offering genuine Deutz spare parts when this is not the case.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") says this:
"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to 'corner the market' in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark."
In this case, there is nothing on the Website explaining the relationship between the Complainant and the Respondent. The products on sale on the Website are not genuine Deutz spare parts. Further the Website also offers for sale other third party products like Volvo. It seems to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the principles in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 "[…] that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark."
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's DEUTZ trade mark when he/she registered the Domain Name. The fact that the Domain Name incorporates the Complainant's well-known trade mark in its entirety, the DEUTZ and Logo trade mark appears on the Website and the Respondent is purporting to offer Deutz spare parts without authorization from the Complainant is in the Panel's view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The use of the Complainant's trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's products. The Domain Name and the content of the Website is calculated to confuse Internet users that the Respondent is an authorised supplier of spare parts of the Complainant's goods and service center when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent's Website and the products sold on it were authorised or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Name are 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 Domain Name <deutz-yunnan.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: April 6, 2016