HOCHTIEF Aktiengesellschaft v. Beau Vowles et al.
Claim Number: FA1407001572695
Complainant: HOCHTIEF Aktiengesellschaft of Essen, Germany.
Complainant Representative: Beetz&Partner Patentanwaelte of Muenchen, Germany.
Respondent: Beau Vowles of Balmain, NSW, Australia.
REGISTRIES and REGISTRARS
Registries: Magic Woods, LLC
Registrars: Gandi SAS
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Omar Haydar, as Examiner.
Complainant submitted: July 31, 2014
Commencement: August 13, 2014
Response Date: August 13, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complaint and findings relate to one domain <hochtief.contractors>. There is one Complainant and one Respondent, and no domain names were dismissed from this complaint.
The Respondent has registered the domain names <hochtief.contractors> in February of 2014, and is the owner of other domain names, including others with the <.contractors> and <.construction> gtlds.
Complainant, HOCHTIEF Aktiengesellschaft of Essen Germany, is a German conglomerate established in 1875, with its primary business in construction. It is the owner of trademark “Hochtief”, which has been registered in one or more countries, including in Australia, where the Respondent is based. Its name has been in use for over 100 years, and is derived from combining the German words Hoch (High) and Tief (Deep), which were part of a longer previous name of the company.
Complainant has claimed that the domain name in question is identical to their protected word or mark; that the Respondent has no legitimate right or interests to the domain; and that the Respondent has registered the domain name in bad faith for the following reason(s):
- Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct
- By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Respondent does not dispute the existence or current use of Complainant’s protected mark, nor does he assert a legitimate right or interest in the domain name except to assert his belief that he registered the domain name “prior to Hochtief registration with ICANN”. Further, the Respondent challenges the bad faith claim as “an assumption on my intentions”.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark for which the Complainant holds a valid national or regional registration and that is in current use.
2. Respondent has no legitimate right or interest to the domain name.
3. The domain name(s) was/were registered and are being used in bad faith.
The Examiner finds that Complainant has proven that the domain name is identical to their protected mark, through evidence of the trademark registration and evidence of the current use of the trademark.
The Examiner finds that the Complainant has proven that Respondent has no legitimate right or interest to the domain name. The Complainant has established their right and interest in the protected mark and the corresponding domain name, being that the domain strictly stated their protected mark. Further, the gtld <.contractors> is closely linked to the industry of Complainant, thereby creating a natural assumption of a link to the Complainant’s company, which was established over 100 years ago and is well known internationally. Complainant also has indicated they have not granted the Respondent any right to utilize the protected mark. Respondent’s only claim is to have registered the domain prior to the Complainant, which on its face, does not create any legal right to using the protected mark, a very distinct one and generally not a commonly used or generic term. Further, the claim is on its own merits inaccurate, as Complainant has peviously registered and utilized multiple domain names using its protected mark, including <hochtief.com> and <hochtief.de>.
The Examiner finds that the Complainant has proven that the domain name was registered and is being used in bad faith. The Complainant has proven their right to and use of the protected mark, and as a result, the lack of a right of the Respondent thereto in such a domain name. As a result, the Respondent’s assertion of bad faith being an assumption of his intentions is misplaced. Without Respondent providing any other legitimate right or interest to using the domain name, the clear and convincing evidence provided by Complainant prevails.
After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<hochtief.contractors>
Omar Haydar, Examiner
Dated: August 18, 2014
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