On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 103306
Time of Filing 2020-09-25 10:13:35
Disputed domain name DELKOR-BATTERY.COM
Case Administrator
Name Iveta Špiclová
Complainant
Organization Clarios Delkor Corporation
Authorized Representative
Organization Brandstock Domains GmbH
Respondent
Name Ling Qing Kong
Other Legal Proceedings
There are no other legal proceedings related to the disputed domain name.
Identification of rights
The Complainant has provided evidence that it owns the trademark DELKOR.
Factual Background
The Complainant, Clarios Delkor Corporation, was established in 1985 as a joint venture with General Motors, the biggest automotive company in the United States. The Complainant was involved in Asia since 1986, when it first completed a production plant construction in Gumi, South Korea. In 1987, the Complainant launched the first automotive battery company in Korea to produce Calcium Maintenance-Free batteries and started to supply car manufacturers in Korea and Japan, which it still does to this day. In 2014, the Complainant integrated Johnson Controls International Plc, a leading international manufacturer of fire, heating, ventilation, air conditioning, and security equipment for buildings, founded in 1885 and employing more than 100 000 people in 2019 across 2 000 locations worldwide. The Complainant has won the Korean Standard-Quality Excellence Award for 14 consecutive years, between 2006 and 2019.

The disputed domain name, <delkor-battery.com>, was registered on July 22, 2020, resolves to a webpage which imitates the Complainant’s official domain name webpage and appears to sell counterfeit goods of the Complainant.
 
COMPLAINANT:

The Complainant contends that the disputed domain name is confusingly similar to the DELKOR mark on the basis that the disputed domain name wholly incorporates the Complainant’s trademark and the addition of a hyphen, descriptive term “battery” and generic top-level domain name suffix (“gTLD”) “.space” are insufficient to avoid the finding that the disputed domain name is confusingly similar to its DELKOR mark.

The Complainant also argues that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name. In addition, the Respondent is not affiliated with the Complainant nor did the Complainant license or authorize the Respondent to use the DELKOR mark.

The Complainant further asserts that the disputed domain name has been registered and is being used in bad faith as the Respondent should have known of the Complainant’s DELKOR mark at the time of registration of the disputed domain name. The Complainant also asserts that the Respondent is attempting to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.


RESPONDENT:

The Respondent did not reply to the Complainant’s contentions.
Rights
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).
No rights or legitimate interests
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).
Bad faith
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
Procedural Factors
The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.
Principal Reasons for the Decision
Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns the trademark DELKOR.

The differences between the disputed domain name <delkor-battery.com> and the Complainant’s DELKOR trademark are the addition of a hyphen, descriptive term “battery” and a gTLD “.com”.

It is established that the addition of a descriptive term would not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

It is also established that gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11). The addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc. WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. 2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A. WIPO Case No. D2009-0877).

The disputed domain name consists of the Complainant’s DELKOR mark and the addition of a hyphen, descriptive term “battery” and a gTLD “.com” which in the Panel’s view does not avoid confusing similarity with the Complainant’s trademark (see Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333; WIPO Overview 3.0, section 1.9).

Therefore, the Panel finds that the disputed domain name is confusingly similar to the DELKOR mark and the element under paragraph 4(a)(i) of the Policy is satisfied.


B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, paragraph 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant submitted evidence that it did not authorize or license the Respondent to use the DELKOR mark (See OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

In addition, the evidence submitted by the Complainant shows that the Respondent is not commonly known by the disputed domain name.

The Respondent did not submit a response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case.

The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain name and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.


C. Registered and Used in Bad Faith

The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence that the disputed domain name <delkor-battery.com> resolves to a webpage that imitates the Complainant’s official domain name webpage. The Respondent’s webpage offers batteries for sale and lists some battery models manufactured by the Complainant and promotes the goods on the website. There is also a “customer service” tab which lists multiple product guarantees by the Respondent to potential buyers. It is categorically held that the use of a domain name for illegal activities such as sale of counterfeit goods or illegal pharmaceuticals can never confer rights or legitimate interests on a respondent and such behaviour is manifestly considered evidence of bad faith (see Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607; WIPO Overview 3.0, section 3.1.4).

It is also the Complainant’s evidence that the Respondent could not have registered the disputed domain name without prior knowledge of the Complainant’s mark as the Respondent’s name has no connection with the Complainant’s DELKOR mark which was registered long ago. This is another indicator of bad faith on the part of the Respondent (see Boursorama SA v. Estrade Nicolas, WIPO Case No. D2017-1463). The Complainant’s evidence is also indication that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.

In addition, the Respondent did not submit a Response in this proceeding which is a further indication of the Respondent’s bad faith, which was considered by the Panel.

Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Complainant’s mark, the fact that the Respondent sells under the disputed domain name competing counterfeit products and the fact that no Response was submitted by the Respondent, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Decision
For all the reasons stated above, the Complaint is Accepted
and the disputed domain name(s) is (are) to be
DELKOR-BATTERY.COM Transferred to Complainant
Panellists
Name Mr. Jonathan Agmon
Date of Panel Decision 2020-11-04
Publication of the Decision
Publish the Decision