WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Rehau AG + Co v. Nanjing Jinmai Mugong Jixie Youxian Gongsi

Case No. D2021-3366

1. The Parties

The Complainant is Rehau AG + Co, Germany, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Nanjing Jinmai Mugong Jixie Youxian Gongsi, China.

2. The Domain Name and Registrar

The disputed domain name <rehaugroup.com> is registered with Xiamen 35.Com Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2021. On October 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 2021, 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 October 15, 2021 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 amended Complaint in English on October 15, 2021.

On October 15, 2021, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 15, 2021. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 October 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 6, 2021. 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

The Complainant is a multinational company providing polymer-based products and services for the construction, automotive, and manufacturing industry. The Complainant was founded in 1948 and is headquartered in Germany. The Complainant currently operates on a nearly worldwide basis, structuring its activities into three regions, namely the Americas, Europe-Middle East and Africa, and Asia/Pacific regions. In fiscal year 2020, the Complainant attained a global turnover of approximately EUR 3.4 billion. The Complainant also has 21,500 employees across 190 locations in 68 countries, and is also active in the Respondent’s home jurisdiction China.

The Complainant provides evidence that it owns a trademark portfolio for REHAU, including, but not limited to, Chinese trademark registration 613840 for the REHAU word mark, registered on October 10, 1992, and German trademark registration number 960457 for the REHAU word mark, registered on July 18, 1977. The Complainant also owns a portfolio of official domain names, including, <rehau.com>, registered on May 28, 1996.

The disputed domain name was registered on January 10, 2016, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directs to an inactive webpage.

The Complainant also submits evidence that it sent three cease-and-desist letters to the Respondent, namely on June 18, 2021, on June 28, 2021, and on July 7, 2021, to attempt to solve this matter amicably. However, the Respondent did not respond to these letters.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for REHAU, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and well-known, and submits company and marketing information regarding its business operations. The Complainant particularly claims that there are no justifications for the use of its trademark in the disputed domain name, contends that the use made of the disputed domain name by the Respondent amounts to passive holding of the disputed domain name, which, it claims, does not confer any rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant claims that given the size of its business operations, including in China, and given the distinctiveness and fame of its REHAU trademark, the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant requests that the disputed domain name be transferred to it.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the administrative proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative 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 Registrar’s verification response, the language of the Registration Agreement for the disputed domain name is Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.

The Panel has carefully considered all elements of this case, and considers the following elements particularly relevant: the Complainant’s request that the language of the proceeding be English; the lack of comments on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited in a timely manner by the Center to present its comments and response in either English or Chinese, but chose not to do so); the fact that the disputed domain name contains the Complainant’s trademark in its entirety and that the disputed domain name is written in Latin letters and not in Chinese characters; the fact that the disputed domain name contains the English word “group”; and, finally, the fact that Chinese as the language of this proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and the language of this administrative proceeding shall be English.

6.2. Discussion and Findings on the merits

The Policy requires the Complainant to prove three elements:

(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.

Based on the evidence and arguments submitted, the Panel's findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark REHAU based on its intensive use and long-standing registration of the same as trademarks.

As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of two elements, respectively the Complainant’s REHAU trademark combined with the descriptive term “group”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s REHAU trademark, which remains easily recognizable as its only distinctive feature. The Panel considers that the addition of the descriptive term “group” therefore does not prevent a finding of confusing similarity. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark for REHAU, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Upon review of the facts and evidence provided by the Complainant, the Panel notes that the disputed domain name directs to an inactive webpage and is not being used. In this regard, the Panel finds that holding a domain name passively, without making any use of it, does not confer any rights or legitimate interests in the disputed domain name on the Respondent (see in this regard earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei), WIPO Case No. D2020-0691 and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui), WIPO Case No. D2021-1685).

Furthermore, the Panel considers that the nature of the disputed domain name, containing the entirety of the Complainant’s trademark for REHAU and incorporating the descriptive term “group”, carries a risk of implied affiliation and cannot constitute fair use, as it effectively impersonates the Complainant (see WIPO Overview 3.0, section 2.5.1).

On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s trademark, by using such trademark in its entirety in the disputed domain name to mislead and divert consumers to the disputed domain name. The Panel considers the disputed domain name to be so closely linked and obviously connected to the Complainant and its trademark that the Respondent’s use of this disputed domain name (incorporating such mark entirely) persuasively points toward the Respondent’s bad faith. Moreover, given the distinctiveness and well-known nature of the Complainant’s trademark, the Panel finds that the registration of the disputed domain name clearly targeted such trademark, and that the Respondent knew, or at least should have known, of the existence of the Complainant’s well-known mark. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.

As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the following elements: the fact that the disputed domain name contains the entirety of the Complainant’s trademark, the high degree of distinctiveness and the well-known nature of the Complainant’s trademarks, the fact that the Respondent disregarded and refused to answer to the Complainant’s cease-and-desist letters, and the unlikelihood of any good faith use to which the domain name may be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent constitutes use of the disputed domain name in bad faith. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 disputed domain name <rehaugroup.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: December 20, 2021