The Complainant is Liebherr-International AG of Bulle, Switzerland, represented by Bardehle Pagenberg Partnerschaft mbB, Germany.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) of Burlington, Massachusetts, United States of America (“US”) / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd of Chitre, Panama.
The disputed domain name <libherr.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2019. On February 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 16, 2019, 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 February 20, 2019 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 February 20, 2019.
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 of the Complaint, and the proceedings commenced on February 22, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2019.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 26, 2019. 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, Liebherr-International AG, was founded in 1949 by Mr. Hans Liebherr, who invented the first mobile tower crane. Since then, the company has expanded to become an international group of companies with more than 40,000 employees worldwide. Today the Complainant is one of the world’s largest manufacturers of construction machinery and is active in a broad variety of businesses including:
- Refrigeration and freezing
- Construction machines
- Mining
- Mobile and crawler cranes
- Material handling technology
- Maritime cranes
- Aerospace and transportation systems
- Gear cutting technology and automation
- Components
The Complainant has been proven to be the owner of the LIEBHERR trademark, which enjoys protection through numerous registrations worldwide.
The Complainant is, inter alia, the owner of:
International trademark LIEBHERR, number 860617, registered on April 26, 2005;
International trademark LIEBHERR, number 1276186, registered on February 24, 2015;
International trademark LIEBHERR, number 1382828, registered on July 25, 2017;
US trademark LIEBHERR, number 2529147, registered on January 15, 2002.
Further, the Complainant is the owner of the domain names <liebherr.com> and <liebherr.de> and a large number of other domain names incorporating the designation “liebherr”, as well as domain names combining its mark with generic terms, such as <liebherr-crane-selection.com> and <liebherr-cooling.com>.
The Complainant has also registered misspelled domain names, such as <libher.com> and <liebher.de>.
The Complainant promotes its products and services in particular on its website “www.liebherr.com” in German and in English.
This disputed domain name was first registered on October 14, 2004.
The disputed domain name is currently used as a sponsored links site, containing links to third party websites such as (for example):
- LIEBHERR
- LIEBHERR COMFORT
- LIEBHERR KRAN (Liebherr Crane in English)
- LIEBHERR BAGGER (Liebherr excavator in English)
- LIEBHERR KÜHLSCHRÄNKE (Liebherr refrigerator in English)
- BAUMASCHINEN (Construction machines in English)
- KÜHLSCHRÄNKE (Refrigerators in English)
- LIEBHERR REFRIGERATOR
- KRAN (Crane in English)
The Complainant’s trademark registrations predate the registration of the disputed domain name.
The Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order for the Complainant to obtain a transfer of the disputed domain name, paragraphs 4(a)(i) – (iii) of the Policy require that the Complainant must demonstrate to the Panel 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 disputed domain name has been registered and is being used in bad faith.
The disputed domain name is clearly confusingly similar to the Complainant’s marks, the missing letter “e” in the disputed domain name being the only difference.
This Panel agrees with the Complainant’s assertion that the missing letter “e” in the disputed domain name is irrelevant in countering the confusing similarity between the Complainant’s trademark and the disputed domain name.
As correctly pointed out by the Complainant, it has already been held by previous UDRP panels that obvious misspellings of a trademark are insufficient to distinguish a domain name from a complainant’s trademark.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the LIEBHERR trademark in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “liebherr” or “libherr.com”. The Respondent has no connection or affiliation with the Complainant, and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. The Respondent is using the disputed domain name to resolve to a sponsored links site, containing links to third party websites that directly refer to the mark and to the core business field of the Complainant.
The Respondent has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complainant’s contentions, claiming any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
The Panel, on the basis of the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.
Indeed, the Complainant gives several bases for its contentions that the disputed domain name was registered and has been used in bad faith.
Particularly relevant are the Complainant’s unchallenged assertions (which the Panel accepts) that:
- the Respondent could not be unaware of the existence of the Complainant’s renown trademarks when registering the disputed domain name;
- the Respondent is using the disputed domain name which is a misspelling of the Complainant’s mark in order to generate traffic to a website with sponsored links which are related to the Complainant’s business.
- the Respondent is, therefore, using the Complainant’s marks to attract visitors to its website, for commercial gain.
According to the Complainant, since the disputed domain name was transferred to the current registrant in 2018, it has been used as a sponsored links website offering products and services including products and services identified by the Complainant’s LIEBHERR mark. Hence, at the time of registration/transfer (for such purpose), the Respondent was aware of the Complainant’s mark, not only because the Complainant is operating its business since 1949, but also in view of the Complainant’s trademark registrations back from 2002, and thus the disputed domain name was registered in bad faith. The Panel notes the Complainant argues that the Respondent registered the disputed domain name on November 6, 2018, but for the purposes of this case the Panel finds the Complainant’s arguments establish registration in bad faith regardless of whether assessed in 2018 or at the time of the original registration in 2004.
The disputed domain name is a clear misspelling of the Complainant’s mark.
The disputed domain name is registered through a privacy or proxy service, and is listed on the SEDO website for sale at a price of USD 3,719.
As correctly pointed out by the Complainant, it has already been held by previous UDRP panels that using a privacy service is not evidence on its own of bad faith. By contrast, using a privacy service for registering a domain name (which itself mislead a further underlying privacy service), used for a sponsored links site, which is a misspelling of a third party’s registered trademark and which is also offered at a price clearly exceeding out-of-pocket costs, shows an inference that the privacy/proxy service is being used to hide the real identity of the underlying registrant, and thus it can be considered an inference of bad faith registration and use of the disputed domain name.
Consequently, the Panel finds that the Respondent knew of the Complainant’s marks and intentionally intended to create an association with the Complainant and its business at the time of registration of the disputed domain name.
Further inference of bad faith registration and use of the disputed domain name is given by the fact that the Respondent has not denied the assertions of bad faith made by the Complainant in this proceeding, so it is therefore reasonable to assume that if the Respondent had legitimate purposes for registering and using the disputed domain name, he would have responded to these assertions.
Accordingly, the Panel finds, on the basis of the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith.
Therefore, the Complainant has satisfied 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 <libherr.com> be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Date: April 9, 2019