ACO Severin Ahlmann GmbH & Co. KG v Jadon Guy

WIPO Case No. D2023-0228

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
ACO Severin Ahlmann GmbH & Co. KG v. Jadon Guy

Case No. D2023-0228

1. The Parties

The Complainant is ACO Severin Ahlmann GmbH & Co. KG, Germany, represented by Bardehle Pagenberg

Partnerschaft mbB, Germany.

The Respondent is Jadon Guy, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <aco-drain.com> (the “Domain Name”) is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2023. connection with the Domain Name. On January 19, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Privacy service provided by Withheld for Privacy ehf), and contact information in the Complaint. The Center sent an email communication to the Complainant on January 20, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 24, 2023.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 31, 2023. In accordance with the Rules, paragraph
5, the due date for Response was February 20, 2023. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 21, 2023.

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The Center appointed Nicholas Smith as the sole panelist in this matter on February 24, 2023. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a German company, founded in 1946, that manufactures construction elements for civil engineering including systems and components for the drainage of buildings and properties. The Complainant and its subsidiaries employ over 5,000 people, trade in 40 countries and operate 30 production facilities in 15 countries.

The Complainant is the owner of trade marks in various jurisdictions consisting of the words ACO DRAIN
(the “ACO DRAIN Mark”), including an international registration for the ACO DRAIN Mark (International
Registration No. 385874, registered January 28, 1972) for goods in class 19, designating countries including
France, Germany, Italy, and Switzerland.

The Domain Name was registered on December 1, 2022. Prior to the commencement of the proceeding, the Domain Name resolved to a website offering pay-per-click advertisements including advertisements referring to drains and the Complainant (i.e. “ACO”).

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i)        that the Domain Name is identical or confusingly similar to the Complainant’s ACO DRAIN Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
The Complainant is the owner of the ACO DRAIN Mark, having registered the ACO DRAIN Mark in various
jurisdictions worldwide, particularly in the European Union. The Domain Name is identical with the
Complainant’s ACO DRAIN Mark.

(iii)      that the Domain Name has been registered and is being used in bad faith.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the ACO DRAIN Mark nor is the Respondent commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Instead, the Domain Name resolves to a pay-per-click site that makes reference to the Complainant’s products. Such use of the Domain Name cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Domain Name and therefore the Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.

Given the reputation of the Complainant and the ACO DRAIN Mark, the Respondent must have been aware of the Complainant at the time it registered the Domain Name. By using the Domain Name to resolve to a website that offers pay-per-click links, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the ACO DRAIN Mark, having registrations for the ACO DRAIN Mark as a trade mark in various jurisdictions in the European Union (France, Germany, and Italy for example).

Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the ACO DRAIN Mark since it wholly incorporates the ACO DRAIN Mark adding only a hyphen. Other UDRP panels have repeatedly held that where the relevant trade mark is recognizable within the disputed domain name, the addition of other elements does not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved
based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the
domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trade mark or service mark rights; or

(iii) you are making legitimate non-commercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ACO DRAIN Mark or a mark similar to the ACO DRAIN Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.

There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services. The use of a domain name for a parking page with pay-per-click links unrelated to a dictionary meaning of

the domain name is not a bona fide offering of goods or services nor is it noncommercial. The Panel notes
the statements in the WIPO Overview 3.0 on the question of whether “parked” pages comprising pay-per-
click links support respondent rights or legitimate interests. The section 2.9 of the WIPO Overview notes
that:

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“Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page
comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on
the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.

Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links

genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to
trade off the complainant’s (or its competitor’s) trade mark.”

In the present case, the Domain Name has no inherent meaning and hence the Respondent’s use of the confusingly similar Domain Name to host a parking page with pay-per-click links including links referring to the Complainant and the service its products are used for (i.e. drainage) does not, absent any further explanation, provide the Respondent with rights or legitimate interests in the Domain Name.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds

that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph

4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

1. circumstances indicating that the Respondent has registered or has acquired the Domain Name

primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name;
or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or

service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has
engaged in a pattern of such conduct; or

1. the Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial

gain, Internet users to its website or other online location, by creating a likelihood of confusion with the or location or of a product or service on the Respondent’s website or location.

The Domain Name was registered well after the ACO DRAIN Mark was first used and registered. The Panel finds, on the balance of probabilities, that the Respondent would have been aware of the Complainant and its reputation in the ACO DRAIN Mark at the time the Respondent registered the Domain Name. The website at the Domain Name refers to the Complainant and drains, being the service some of the Complainant’s products are used for and there is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name essentially identical to the ACO DRAIN Mark unless there was an intention to create a likelihood of confusion between the Domain Name and the ACO DRAIN Mark.

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The Domain Name has been used for a parking page with pay-per-click links for which the Respondent likely received some commercial gain. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name, the Panel finds that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ACO DRAIN Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such the Panel finds that the Domain Name is being used in bad faith pursuant to 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <aco-drain.com> be transferred to the Complainant.

/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: March 1, 2023