HOCHTIEF Aktiengesellschaft v. Fabrizio Benassi
Claim Number: FA1409001578397
Complainant: HOCHTIEF Aktiengesellschaft of Essen, Germany.
Complainant Representative: Beetz&Partner Patentanwälte of München, Germany.
Respondent: Fabrizio Benassi of Milano, Italy.
REGISTRIES and REGISTRARS
Registries: Romeo Canyon
Registrars: Tucows Domains Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Peter Müller, as Examiner.
Complainant submitted: September 5, 2014
Commencement: September 11, 2014
Default Date: September 26, 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").
The Complainant requests that the disputed domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1.] The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is inter alia registered owner of the German trademark no. 1102406 HOCHTIEF, applied for on April 11, 1984 and registered on February 13, 1987, and the Community trademark no. 000060061 HOCHTIEF, applied for on April 1, 2006 and registered on October 13, 1998, as well as documents to show that the trademarks are in current use.
The disputed domain name fully incorporates the Complainant’s HOCHTIEF Marks. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the Complainant’s HOCHTIEF Marks and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Registrant has no legitimate right or interest to the disputed domain name.
The disputed domain name is used in connection with a standard placeholder website provided by the Respondent’s hosting provider which does not contain any kind of advertising links.
The Complainant argues that the Respondent has no right or legitimate interest to the disputed domain name, that he has never been authorized by the Complainant to register the disputed domain name, that he has no connection or affiliation with the Complainant, and that the Respondent is using the website under the disputed domain name as parking website.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
The Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant states that it is one of the worlds’ leading construction groups with a history of more than 140 years in their core competence of construction, with more than 80.000 employees, and with a sales volume of EUR 25.69 bn in the fiscal year of 2013. It further contends that the trademark HOCHTIEF is well-known, that it owns a subsidiary acting under the name HOCHTIEF Engineering GmbH, that the disputed domain name creates a natural assumption of a link to the Complainant’s company, and that the disputed domain name was registered and is being used in bad faith. In this regard, the Complainant states that the Respondent registered the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of documented out-of pocket costs directly related to the domain name, and that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name. However, the Complainant has not provided any evidence that the disputed domain name was in fact offered for sale or that the Respondent has engaged in a pattern of registering third parties’ trademarks as domain names.
The Complainant’s HOCHTIEF Marks were validated by the Trademark Clearinghouse prior to the registration of the dispute disputed domain name. As a result, the Respondent must have been given a trademark claims notice of the Complainant’s rights and therefore registered the disputed domain name in bad faith. As to bad faith use, it is blindingly obvious that the registration of the disputed domain name is targeting the Complainant and its trademarks, as the disputed domain name fully incorporates the Complainant’s well-established HOCHTIEF Marks, as the top level domain “.engineering” is closely linked to the industry of the Complainant, and as the disputed domain name also corresponds to the name of one of the Complainant’s subsidiaries. As a result, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith.
The Examiner finds that the disputed domain name was registered and is being used in bad faith and that the Complainant satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s 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 names be SUSPENDED for the duration of the registration.
<hochtief.engineering>
Peter Müller, Examiner
Dated: September 30, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page