URS FINAL DETERMINATION
HOCHTIEF Aktiengesellschaft (AG) v. Ivo Prochazka et al.
Claim Number: FA1603001664776
DOMAIN NAME
<hochtief.cloud>
PARTIES
| Complainant: HOCHTIEF Aktiengesellschaft (AG) of Essen, Germany | |
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Complainant Representative: BEETZ & Partner mbB Patent- und Rechtsanwälte
Julia Göppel of München, Germany
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| Respondent: IVO PROCHÁZKA of VELKÁ NAD VELIČKOU, Czech Republic | |
REGISTRIES and REGISTRARS
| Registries: ARUBA S.p.A. | |
| Registrars: Tucows Domains Inc. |
EXAMINER
| 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. | |
| Mr. Tomáš Abelovský, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: March 10, 2016 | |
| Commencement: March 15, 2016 | |
| Response Date: March 29, 2016 | |
| Having reviewed the communications records, the Examiner finds that the 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"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Complainant provided the following initial explanatory text, in his Complaint: “The Complaint is filed on behalf of Hochtief Aktiengesellschaft (AG), Opernplatz 2, 45128 Essen, Germany, a joint stock corporation duly registered under the laws of Germany. Complainant 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 44.000 employees and a sales volume of EUR 21.1 bn in the fiscal year of 2015, the company is represented in all the worlds’ major markets. Attached are excerpts of Complainants homepage as Annex 1. The 2015 ranking from Engineering News-Record Magazine reaffirmed the groups status as one of the worlds’ most international global contractors, being placed in the TOP 250 on rank 9, Annex 1. Complainant owns the trademark “HOCHTIEF” which is wellknown throughout the world and enjoys a reputation for a leading group in the area of construction (see HOCHTIEF AG v. Beau Vowles, FA1407001572695). The trademark “HOCHTIEF” is registered in many countries around the world and is used almost all over the world, especially for construction services and related goods and services, for example: German registration no. 1102406 “HOCHTIEF” (word) with registration date of February 13, 1987 in class 37 for construction services. Registration by acquired distinctiveness according to the national German Trademark Act. CTM registration no. 60061 “HOCHTIEF” (word) with registration date of October 13, 1998 in classes 6, 9, 19, 35, 36, 37, 39, 40, 42. Full details of these trademarks and copies of the trademark certificates are attached in Annex 1. Furthermore Complainant registered and uses a variety of domain names, inter alia hochtief.com. The contested domain name “hochtief.cloud” is identical or confusingly similar to the trademark since it totally contains the word HOCHTIEF and only add “.cloud” to it. Complainant’s trademark is the only distinctive part of the contested domain name. The further element “.cloud” refers to the gTLD ending. The domain name is thus identical or at least confusingly similar to Complainant’s trademark (see MediaSaturnHolding GmbH v. Gadiyork,SL FA1404001552029). Respondent has no legitimate right or interest to the domain. The domain name is currently resolved to a parking page, Annex 2. Respondent has never been authorized by Complainant and has in no way any connection or affiliation with Complainant. Complainant uses its trademark for many decades and registered the same with the Trademark Clearing House (TMCH) in February 2014. Complainant has received a notification from the TMCH regarding the registration of the new domain by Respondent, Annex 2. Thus Respondent must have known of Complainant’s wellknown mark when registering the domain name and when resolving it to a parking website. The domain name was registered and is used in bad faith. Respondent has knowingly registered the disputed domain name long after Complainants trademark was firstly used and despite a notification from TMCH. As such, it is submitted that the domain name is being registered by Respondent in bad faith and is an abusive registration as described under URS Procedure 1.2.6. (see case FA1404001552029 as cited above).” Responded provided the response in Czech language based on the fact that he has registered HOCHTIEF.CLOUD in good faith and his interest was not to harm the brand HOCHTIEF. Pursuant to his response, the domain was free and it was possible to register. |
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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.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant Complainant proved that he owns registered trademark “HOCHTIEF” which is well-known throughout the world and enjoys a reputation for a leading group in the area of construction. The trademark “HOCHTIEF” is registered in various countries around the world and is broadly used. It is clear that the domain name reproduces the trademark. Also, it is true that the new gTLDs “.CLOUD” does not reduce the similarity with the Complainant' trademark. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant Complainant proved that Respondent has no rights or legitimate interests in the domain name. Furthermore, the Complainant has not authorized the Respondent to use his trademark. Correspondingly, Respondent has not disputed the existence or current use of Complainant’s protected mark.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant Respondent has registered and used the domain name in bad faith. Complainant has thus satisfied paragraph 1.2.6.3 of the URS Procedure. It can be confirmed that Complainant's trademark has amount of notoriety and industry well-known identification. It is obvious that Complainant uses its trademark for longer time and registered the same with the Trademark Clearing House. Furthermore, Respondent must have been aware of the trademark (and products) at the time of the registration of the domain name. Because the well-known trademark, he must also have known that the registration of the domain name was in bad faith. Moreover, the Respondent has prevented the Complainant from using/reflecting its trademark in a corresponding domain name. In conclusion, a passive possession of identical domain name consisting of protected word mark and without any manifest proof of purpose towards commercial benefit, can't represent a good faith use under overall circumstances presented in this case. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
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(s) be SUSPENDED for
the duration of the registration:
|
Mr. Tomáš Abelovský
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