Decision for dispute CAC-UDRP-105415

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of the trademark “KRUPP” registered in the countries set out in the table below.

The Complainant also maintains a strong online presence and operates its main webpage at "www.thyssenkrupp.com”, which it registered on December 5, 1996. The Complainant is also the registrant of numerous additional domain names containing its trademark and company name “krupp” and “thyssenkrupp”, including <krupp.com>; <krupp.de> and <krupp.cn>.

The Complainant’s company name is the result of a merger of two German well-known steel companies, Thyssen AG founded in 1891 and Krupp AG founded in 1811. As early as the 1980s, the companies began negotiations on a merger and began closely cooperating in some business areas. In 1997, the companies combined their flat steel activities, with a full merger completed in March 1999.

The Complainant is a German conglomerate with more than 100.000 employees and a revenue of more than 34 billion EUR in fiscal 2020/2021. It is one of the world's largest steel producers and was ranked tenth largest worldwide by revenue in 2015.

The Complainant’s business operations are organized in five business areas: Steel Europe, Bearings and Forged Technologies, Automotive Technology, Marine Systems and Materials Services and Multi Tracks. The business areas are divided into business units and operating units. In 56 countries, 335 subsidiaries and 22 investments accounted for by the equity method are included in the consolidated financial statements.

The Complainant’s product portfolio includes “steel”, “metals”, “alloys”, “rolled steel”, “stainless steel”, “nonferrous metals”, “hot strip”, “heavy plate”, “sheet and coated products”, “organic coated strip and sheet”, “composite material”, “electrical steel”, “packaging steel”, “precision steel strip”, “submarines”, “naval surface vessels”, “naval services”, “steering”, “dampers”, “springs and stabilizers”, “axle assembly”, “camshafts”, “crankshafts and conrods”, “bearings”, “undercarriages”, “chemical plants”, “coke plant technologies”, “industrial plant services”, “cement plants”, “mining and mineral solutions”, “automotive plants”, “materials handling”, “planning and technical assessments”, “system integration”, “automation solutions”, “handling and transport”, “jigs and tools”, “assembly lines”, “plastics”, “materials services (processing)”, “logistics services”, infrastructure projects and services”.

The disputed domain names and its respective registration dates set out below:

The Complainant contends that the requirements of the Policy have been met and that the disputed domain names should be transferred to it.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are 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).

The Panel accepts that the Complainant has rights by reason of its ownership of the registered trademark “KRUPP”.  The question is whether the disputed domain names are identical or confusingly similar to the Complainant’s trademark.

The Complainant contends that the disputed domain names <kruppsteelsupply.com>, <kruppmetal.com>, <jskruppsteel.com> and <kruppalloys.com> are confusingly similar with its trademark.

Whether a domain name is identical or confusingly similar to a trademark can be determined by making a side-by-side comparison with the domain name. See F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. D2009-0323.

A domain name is identical to the trademark when it is a character for character match. It is confusingly similar when it varies the trademark by, for example, adding generic terms to the dominant part of the trademark.

Here, in three of the disputed domains the term “KRUPP” is prominently located at the beginning of the disputed domain names. In one of the disputed domain names, the term “JS” precedes the trademark “KRUPP” followed by the generic term “STEEL”.

The Panel accepts the contention that the “KRUPP” trademark appears to be the dominant element in each of the disputed domain names that seek to create the impression that they are controlled by the Complainant. The trademark "KRUPP" is reproduced in its entirety in each of the disputed domain names.  It is likely that the relevant public's attention will be captured more by the initial parts of a sign. See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488, where the Panel stated that it is a long-established precedent that confusing similarity is generally recognized when well-known trademarks are paired up with different kinds of generic prefixes and suffixes.

Turning to each of the disputed domain names specifically:

Accordingly, the Panel considers that the each of the disputed domain names are confusingly similar to the Complainant’s trademark “KRUPP” and this ground is made out.

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 names (within the meaning of paragraph 4(a)(ii) of the Policy).

A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Document Technologies, Inc. v. International Electronic Communications Inc, WIPO Case No. D20000270.

If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455.

The Complainant contends the Respondent has no rights in each of the disputed domain names for the following reasons:

1. There are no indications that the Respondent has been commonly known by the disputed domain names.

2. The Respondent does not use the disputed domain names for non-commercial purposes.

3. The Respondent has never been authorized by the Complainant to register or use any of its trademarks, nor has it been authorized to register or use any domain name incorporating the Complainant’s trademark and company name. Rather, the Respondent has no connection at all with the Complainant or any of its affiliates.

The Panel accept the evidence adduced that the Complainant’s trademark “KRUPP” that its reputation is well-known worldwide. The Complainant’s numerous trademarks registered worldwide and its ownership of a vast array of domain names by reference to its trademark are irrefragable evidence showing its long history of use of its trademark “KRUPP” in connection with its business.

The Panel is also prepared to infer that the Respondent is or was offering for sale and/or advertising the sale of products that are not authorised by the Complainant.

The evidence here also shows that the Respondent is not commonly known by the disputed domain names, nor the Respondent has legitimate interest over the disputed domain names.

The Panel accepts the contention that the Respondent does not use the disputed domain names for non-commercial purposes. The Panel is also prepared to infer from the evidence adduced that the Respondent is not making a legitimate commercial or fair use of the disputed domain names but rather it is riding on the reputation of the Complainant to best serve its own unauthorised activity for commercial gain or otherwise using the disputed domain names.

The Panel considers that the only reason why the Respondent registered the disputed domain names is to take advantage of the Complainant’s goodwill and valuable reputation in the “KRUPP” trademark.

No challenge has been made by the Respondent to the Complainant’s contentions and assertions as it has not filed any administratively compliant response.

Given the evidence adduced by the Complainant of its portfolio of trademarks and wide reputation which the Panel accepts as evidencing the strength of its reputation, the Panel accepts and finds that the Respondent has no rights or legitimate interests to the disputed domain names.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

There are two elements that must be satisfied – registration and use in bad faith.

Registration in bad faith

The Complainant asserts that it enjoys worldwide reputation and market presence in the steel sector. The evidence adduced support this assertion.

The Complainant further asserts that the Respondent must have been fully aware of the Complainant, its “KRUPP” trademarks when purchasing the disputed domain names, i.e. registering it in his own name.

The Panel accepts that the Complainant’s company name as well as its trademarks “KRUPP” and others including “THYSSENKRUPP” have a strong reputation and are widely known not only in Germany but also in many other countries in the world.

Registration of a domain name which appears to be connected to a well-known trademark has been found by other Panels to constitute opportunistic bad faith. See F. Hoffmann-La Roche AG v. Contactprivacy.com / Mike Kazaros, WIPO Case No. D2010-2212.

Here, the Respondent’s registration of the disputed domain names, given the widespread use of the Complainant's “KRUPP” trademark over a long period of time, its market presence in the steel industry, and the Respondent’s lack of association with the Complainant suggests that the Respondent had actual or constructive knowledge of the Complainant’s rights at the time the Respondent registered the disputed domain names.

Accordingly, the Panel is prepared to draw the adverse inference that the Respondent registered the disputed domain names incorporating the “KRUPP” trademark directly relating to the Complainant’s business intentionally, to take advantage of reputation of the “KRUPP” trademark and the Complainant’s business goodwill.  

Use in bad faith

The Panel has already accepted the Complainant’s widely held reputation in its “KRUPP” trademark and its market presence in the steel industry.

The Complaint asserts that the term “KRUPP” does not exist in any language. There is no other reason to choose a domain name comprising the Complainant’s well-known trademark as the distinctive and therefore dominant element, except of the fact, that the Respondent intends is to participate in the Complainant’s reputation and economic success.

The Complainant contends that this is neither a bona fide use of the disputed domain names nor a legitimate non-commercial or fair use. See Ford Motor Company v. Domain Administrator, WIPO Case No. D2008-1856 and Intesa Sanpaolo S.p.A., v. Shawn Chiu Wai, WIPO Case No. D2010-0946.

Free-riding on the rights of another does not constitute a bona fide use of a domain name. See Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946 and Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088.

The Panel accepts the uncontradicted assertion of the Complainant that the Respondent cannot claim any rights or legitimate interests in the disputed domain names. Accordingly, the Panel considers that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services.

No challenge has been made by the Respondent to the Complainant’s contentions and assertions as it has not filed any administratively compliant response.

Accordingly, the Panel accepts that each of the disputed domain names were registered by the Respondent and used in bad faith.

Language of proceedings request

The Complainant requests that the English language should be the language of the proceeding rather than the Chinese language for the following reasons:

1. English is a neutral language.
   
   
2. The disputed domain names and all its content are in English. This fact is a clear indication that the Respondent has sufficient knowledge of the English language to conduct this proceedings in English. Since English is the world trade language and therefore the most important language for international communication it is obvious that the Respondent use this language with the intention of attracting consumers worldwide, beyond the Chinese market.
   
   
3. Determining Chinese as the language of the proceedings would lead to considerable disadvantages for the Complainant. It has to be pointed out that the Complainant has no knowledge at all of the Chinese language.

4. Determining Chinese as the language of the proceedings would give the Respondents a clear advantage although it is obvious that the disputed domain names were registered in bad faith.

5. It would be both procedurally and economically efficient to proceed in English. Rule 11(a) of the UDRP rules states:

Rule 11(a) of the UDRP rules states:

Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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.

Here, the language of the registration agreement is Chinese as verified by the Registrar.

In conducting the administrative proceeding, the Panel is required to ensure under Rule 10 of the UDRP rules that the Parties are treated with equality and be given a fair opportunity to present its case.

The Respondent has not filed any administratively compliant response to the Complainant’s Amended Complaint despite attempts made to contact the person listed in the Registrar's information.

On balance, the Panel considers the proceedings can proceed in the English language given the disputed domain names use an English language trademark that is combined with an English language non-distinctive or generic terms “STEEL”, “METAL”, “ALLOYS”, or the “JS” consonants, and each of the disputed domain names’ website appears to be active and are offering goods for sale that are described in the English language.

In the circumstances, the Panel accepts the Complainant's request and considers that it is appropriate to proceed to determine the proceeding in the English language.

Notification of proceedings to the Respondent

When forwarding a Complaint, including any annexes, electronically to the Respondent, paragraph 2 of the Rules states that CAC shall employ reasonably available means calculated to achieve actual notice to the Respondent.

Paragraphs 2(a)(i) to (iii) set out the sort of measures to be employed to discharge CAC’s responsibility to achieve actual notice to the Respondent.

On July 18, 2023 the CAC by its non-standard communication stated as follows (omitting irrelevant parts):

That neither the written notice of the Complaint was not sent by the post services due to non-existent and non-sufficient physical address or address of seat.

As far as the e-mail notice is concerned, we received a notification that the e-mail sent (in both English and Chinese) to postmaster@jskruppsteel.com was returned back as undelivered - (please find the notification enclosed). The e-mail notice was also sent to postmaster@kruppsteelsupply.com, postmaster@kruppmetal.com, postmaster@kruppalloys.com and to 87497567@qq.com, but we never received any proof of delivery or notification of undelivery to these addresses. No further e-mail address could be found on the disputed site.

The Respondent never accessed the online platform.

Given the reasonable measures employed by CAC as set out in the above non-standard communication, 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.

The Complainant owns the international trademark “KRUPP” and multiple domain names with the “KRUPP” trademark which are used in connection with its goods or services.

The Respondent registered the disputed domain names <kruppsteelsupply.com> on November 23, 2022; <kruppmetal.com> on November 23, 2022; <kruppalloys.com> on December 12, 2022; and <jskruppsteel.com> on November 23, 2022.

Each of the disputed domain names were registered after the Complainant’s trademark “KRUPP”.

Prima facie, the Registrar’s Verification shows that each of the disputed domain name is held by the Respondent.

The Complainant challenges the registration of the disputed domain names under paragraph 4(a)(i) of the Uniform Dispute Resolution Policy and seeks relief that the disputed domain names be transferred to the Complainant.

The Respondent failed to file any administratively compliant response.

For the reasons articulated in the Panel’s reasons above, the Complainant has satisfied the Panel of the following:

(a) Each of the disputed domain names is confusingly similar to the Complainant’s widely known “KRUPP” trademark.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain names.

(c) The disputed domain names have been registered and are being used in bad faith.