Decision for dispute CAC-UDRP-108098

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 states that it is the owner of the following trademark registrations:

• International trademark registration No. 383704 “BILSTEIN”, registered on 30 September 1971, for goods in classes 6, 7, 8, 12;
• International trademark registration No. 612596 “BILSTEIN”, registered on 28 October 1993, for products in classes 7, 12;
• International trademark registration No. 613186 “BILSTEIN GAS PRESSURE SHOCK ABSORBERS”, registered on 10 December 1993, for goods in classes 7, 12;
• International trademark registration No. 1025467 “Bilstein”, registered on 4 November 2009, for goods in class 12;
• International trademark registration No. 1282989 “BILSTEIN”, registered on 22 October 2015, for products in classes 7, 12, 17;
• International trademark registration No. 1530602 “BILSTEIN”, registered on 26 November 2019, for goods in classes 9, 16, 25;
• International trademark registration No. 1688993 “BILSTEIN”, registered on 2 May 2022, for products in classes 7, 12;
• International trademark registration No. 1692067 “BILSTEIN”, registered on 2 May 2022, for goods in classes 7, 12.

The Complainant proved its ownership of the aforementioned trademark registrations by the submitted extract from the WIPO database.

The Complainant is also the registrant of numerous domain names containing its trademarks “Bilstein” and “thyssenkrupp Bilstein”. The Complainant maintains a strong online presence and operates its main webpage at <bilstein.com>, registered on 8 August 1996.

The disputed domain name <bilstein.info> (hereinafter “disputed domain name”) was registered on 11 November 2024. According to the Registrar, the Respondent is ‘Irina Lapchevska’. The Respondent provided an address as being in Ukraine.

COMPLAINANT:

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

RESPONDENT:
No administratively compliant Response has been filed.

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 UDRP).

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 UDRP).

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 UDRP).

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.

In the present case, the Respondent has not submitted any Response and consequently has not contested any of the contentions made by the Complainant. Therefore, the Panel proceeds to decide only on the basis of the Complainant’s factual statements and the documentary evidence provided in support of them [Paragraph 5(f) of The Rules].

1. CONFUSING SIMILARITY

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

The WIPO Overview 3.0 in Paragraph 1.2.1 states: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”

The WIPO Overview 3.0 in Paragraph 1.7 states: “[…] in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The WIPO Overview 3.0 in Paragraph 1.11.1 states: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., ”.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”

In the present case, the Complainant has established that it owns numerous international trademark registrations for the “BILSTEIN” verbal element, protected for the classes in connection with automotive accessories (evidenced by the extract from the WIPO database).

The “BILSTEIN” verbal element itself originates from the name of the Complainant’s founder, August Bilstein. From the materials submitted with the Complaint, it is clear that the Complainant has a long-term history with a global reputation and strong online presence.

The disputed domain name <bilstein.info> contains the Complainant’s trademark “BILSTEIN” in its entirety.  

The “.info” element of the disputed domain name does not affect the finding of confusing similarity.

Therefore, the disputed domain name is considered to be confusingly similar to the relevant trademark.

As a result, the Panel finds that the Complainant has satisfied Paragraph 4(a)(i) of the UDRP.

2. THE RESPONDENT´S LACK OF RIGHTS OR LEGITIMATE INTEREST IN THE DISPUTED DOMAIN NAME

The Panel finds that the Respondent lacks rights or legitimate interest in the disputed domain name.

According to Paragraph 4(a)(ii) of the UDRP, the Complainant shall make a case that the Respondent lacks rights and legitimate interests in the disputed domain name. If the Complainant fulfils this demand the burden of proof shifts to the Respondent and so the Respondent shall demonstrate rights or legitimate interests in the disputed domain name. If the Respondent fails to prove its rights or legitimate interests, it is assumed that the Complainant satisfied the element of Paragraph 4(a)(ii) of the UDRP (see CAC Case No. 102430, Lesaffre et Compagnie v. Tims Dozman). Moreover, past panels were of the view that it is difficult or sometimes impossible to prove negative facts, i.e., absence of rights or legitimate interest on the part of the Respondent. In this respect, past panels referred to the WIPO Case No. D2000-1769, Neusiedler Aktiengesellschaft v. Vinayak Kulkarni. Within the meaning of Paragraph 4(a)(ii) of the UDRP, once the complainant has made something credible (prima facie evidence), the burden of proof shifts to the Respondent to show that he has rights or legitimate interests in the domain name at issue by providing concrete evidence.

The WIPO Overview 3.0 in Paragraph 2.5.1 states: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.“

In the Forum Case No. FA 1781783, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group <bobsfromsketchers.com>, the Panel stated: “Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.” The Panel therefore finds under Policy ¶ 4(c) (ii) that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c) (ii).”

The Complainant claims that the Respondent has never been authorized by the Complainant to register or use any of the Complainant’s 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.

The Complainant asserts that the Respondent has not used the disputed domain name for any legitimate business or non-commercial fair use purposes. The Respondent has not provided any evidence of demonstrable preparations to use the domain in connection with a legitimate offering of goods or services.

The Complainant concludes that there is no plausible reason for the Respondent to choose a domain name incorporating the Complainant’s distinctive “Bilstein” mark, unless the intent was to mislead or benefit from its established commercial value.

To the satisfaction of the Panel, the Complainant made a prima facie case that there is no connection between the Complainant and the Respondent and that the Respondent does not have authorization in the disputed domain name from the Complainant.

The Complainant submitted Whois information of the disputed domain name proving that the Respondent is not known under the disputed domain name.

The Respondent did not file any Response to the Complaint. Thus, the Respondent failed to demonstrate rights or legitimate interest in the disputed domain name.

The Panel is of the view that the Respondent has no rights or legitimate interest in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement under Paragraph 4(a)(ii) of the UDRP.

3. THE REGISTRATION AND USE OF THE DISPUTED DOMAIN NAME IN BAD FAITH

The Panel finds that the Respondent registered and uses the disputed domain name in bad faith.

The WIPO Overview 3.0 in Paragraph 3.1.4 states: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith […].“

The WIPO Overview 3.0 in Paragraph 3.3 states: “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.

While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

In the present case, the Complainant has established that it owns numerous international trademark registrations for the “BILSTEIN” term, protected for the classes in connection with automotive accessories (proved by the extract from the WIPO database).

As stated above, the disputed domain name is confusingly similar. This finding indicates the bad faith of the Respondent.

Because of the Complainant’s worldwide business activities and recognition of the Complainant’s trademarks (see, e.g., the CAC Case No. CAC-UDRP-107901, thyssenkrupp Bilstein GmbH v. SuperAspect LTD), the Panel is of the opinion that the Respondent must have been aware of the Complainant, its trademark and business activities at the moment of registering the disputed domain name on 11 November 2024.

There is no indication of any demonstrable plan for the disputed domain name’s use from the Respondent. In the given circumstances, the disputed domain name is passively held by the Respondent.

Moreover, as mentioned earlier, according to the respective Whois information, the identity of the Respondent is hidden. By that, the Respondent cannot be known under the disputed domain name.

Since the Respondent did not respond to either the Complainant’s letter or to the Complaint, no evidence in favor of the Respondent was submitted. At the same time, no good faith can be found in such inactivity.

Therefore, the Panel is of the view that the Respondent did not register and is not using the disputed domain name in good faith.

Following the above-mentioned, the Panel finds that the Complainant has satisfied conditions pursuant to Paragraph 4(a)(iii) of the UDRP.