voestalpine AG v. Sodiroche sodiroche / Sodiroche
Claim Number: FA2306002050814
Complainant is voestalpine AG (“Complainant), represented by Friedrich Jell, Austria. Respondent is Sodiroche sodiroche / Sodiroche (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <voestalpine.com.de>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on May 2, 2023.
Complainant submitted a Complaint to Forum electronically on June 27, 2023; Forum received payment on June 27, 2023.
On June 28, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <voestalpine.com.de> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”)
On June 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@voestalpine.com.de. Also on June 30, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown
KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Resolution Policy (the "Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Voestalpine AG – stylized as voestalpine – is an Austrian steel-based technology and capital goods group based in Linz, Austria. Complainant asserts rights in the VOEST-ALPINE mark based upon registration with the Österreichische Patentamt (ÖPA) (e.g. Reg. No. 90,051, registered December 29,1978). See Compl. Annex 1. The <voestalpine.com.de> domain name is identical or confusingly similar to Complainant’s mark because the disputed domain name includes the entirety of the VOEST-ALPINE mark adding the “.com” generic top level domain (“gTLD”) along with the “.de” geographic descriptor for Germany.
Respondent does not have rights or legitimate interests in the <voestalpine.com.de> domain name. Respondent is not licensed or authorized to use Complainant’s VOEST-ALPINE mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain resolves to a webpage that passes off as Complainant.
Respondent registered or uses the <voestalpine.com.de> domain name in bad faith. Respondent used the disputed domain name to send fraudulent emails to well-established business partners of the Complainant. The disputed domain name resolves to a website that mimics Complainant’s. Respondent is creating a likelihood of confusion with Complainant’s mark. Lastly, Respondent had actual knowledge of Complainant’s rights in the VOEST-ALPINE mark at the time of registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an Austrian company engaged in the steel-based technology and capital goods industry.
2. Complainant has established its rights in the VOEST-ALPINE mark based upon its registration of the mark with the Österreichische Patentamt (ÖPA) (e.g. Reg. No. 90,051, registered December 29, 1978).
3. Respondent has caused the disputed domain name to resolve to a webpage that passes itself off as that of Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon prior UDRP decisions as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the VOEST-ALPINE mark (e.g. Reg. No. 90,051, registered December 29, 1978) based upon registration with the ÖPA. See Compl. Annex 1. Registration of a mark with trademark agencies throughout the world is considered a valid showing of rights under Policy ¶ 4(a)(i). See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“Registering a mark with multiple trademark agencies around the world is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established its rights in the VOEST-ALPINE mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VOEST-ALPINE mark. Complainant submits that Respondent’s <voestalpine.com.de> domain name is identical or confusingly similar to Complainant’s mark. The addition of a gTLD and a geographic descriptor are usually considered irrelevant per Policy ¶ 4(a)(i). See Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum Aug. 30, 2016) (“Complainant asserts Respondent’s <boniva.top> domain name is identical to the BONIVA mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy ¶ 4(a)(i).”); see also Fusion Media Network, LLC v. paolo de luca, FA 1717497 (Forum Mar. 30, 2017) (finding that “the addition of country code top-level domains (“ccTLDs”), i.e., ‘.co,’ ‘.de,’ ‘.tv,’ ‘.es,’” does not have a “distinctive function” and therefore fails to differentiate a domain name from a complainant’s mark). The only other change from the trademark is that it has a hyphen which is not included in the domain name. However, domain name law and practice regularly finds that a domain name in those circumstances is confusingly similar to a trademark with a hyphen. Here, the disputed domain name includes the entirety of the VOEST-ALPINE mark adding the “.com” gTLD along with the “.de” geographic descriptor for Germany. Accordingly, as the Panel agrees, it finds that the <voestalpine.com.de> domain name is identical or confusingly similar to the Complainant’s VOEST-ALPINE mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
a) Respondent has chosen to take Complainant’s VOEST-ALPINE mark and to use it in its domain name, adding the “.de” geographic descriptor for Germany which cannot negate the confusing similarity between the domain name and the trademark;
b) Respondent has caused the disputed domain name to resolve to a webpage that passes itself off as that of Complainant;
c) Respondent has engaged in these activities without the consent or approval of Complainant;
d) Complainant contends that Respondent does not have rights or legitimate interest in the <voestalpine.com.de> domain name because Respondent is not licensed or authorized to use Complainant’s VOEST-ALPINE mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Sodiroche sodiroche”. See Verification Registrar Email. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
e) Complainant submits that Respondent does not use the <voestalpine.com.de> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the Respondent’s website passes itself off as an official website of the Complainant. Resolving to a website which passes itself off as a complainant’s does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Here, Complainant provides evidence of the resolving website. See Compl. Annex 13. Accordingly, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith or has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered or used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered or uses the <voestalpine.com.de> domain name in bad faith due to the fact that the Respondent sent fraudulent email inquiries to well-established business partners of the Complainant, using the email address with the disputed domain name as well as noting the actual name of the current Voestalpine employee in the sent email’s signature. The use of a disputed domain name to send fraudulent emails is evidence of bad faith per Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Here, Complainant provides evidence of the email sent from the disputed domain name to business partners of the Complainant. See Compl. Annex 12. As such, as the Panel agrees, it finds that Respondent has acted in bad faith registration or use per Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent registered or uses the <voestalpine.com.de> domain name in bad faith because the disputed domain name resolves to a website that mimics Complainant’s website in order to confuse users into believing that the Respondent is the Complainant, or is, otherwise, affiliated or associated with the Complainant. Mimicking a complainant’s website in this way to create a false affiliation indicates bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides evidence of the resolving website. See Compl. Annex 13. So, the Panel agrees and finds that the Respondent registered or uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Thirdly, Complainant contends that the Respondent has used the <voestalpine.com.de> domain name to increase its own credibility by creating a likelihood of confusion with the Complainant’s rights including the well-known brand as to source, affiliation or endorsement. Creating this confusion with the Complainant’s mark indicates bad faith under Policy ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). The Panel agrees and finds that the Respondent registered or uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Fourthly, Respondent submits that Respondent had actual knowledge of Complainant’s rights in the VOEST-ALPINE mark at the time of registering the <voestalpine.com.de> domain name. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). To support this submission, it is implausible that Respondent was unaware of Complainant given the well-established reputation of the Complainant. Therefore, as the Panel finds Respondent had actual knowledge of Complainant’s rights in its mark, this supports a finding of bad faith under Policy ¶ 4(a)(iii).
engaged in when using the domain name, Respondent registered or used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <voestalpine.com.de> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 27, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page