Phoenix Contact GmbH & Co. KG v Carlos Figueira

WIPO Case No. DAI2025-0004

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Phoenix Contact GmbH & Co. KG v. Carlos Figueira

Case No. DAI2025-0004

1. The Parties

Complainant is Phoenix Contact GmbH & Co. KG, Germany, represented by Taylor Wessing LLP, Germany.

Respondent is Carlos Figueira, Venezuela (Bolivarian Republic of ).

2. The Domain Name and Registrar

The disputed domain name <phoenixcontact.ai> (the “Domain Name”) is registered with 1API GmbH (the

“Registrar”).

3. Procedural History

The Complaint was f iled with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2025. On February 28, 2025, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the Domain Name. On March 5, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which dif fered from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email to Complainant on March 6, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant f iled an amended Complaint on March 6, 2025.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2025. Respondent did not submit any response. Accordingly, the Center notif ied Respondent’s default on April 2, 2025.

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The Center appointed Robert A. Badgley as the sole panelist in this matter on April 7, 2025. The Panel f inds 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

According to the Complaint:

“The Complainant is a German company and the worldwide market leader of components, systems and solutions in the area of electrical engineering, electronics and automation. Altogether, the Complainant employs nearly 20,000 people worldwide and its products and services are available in more than 100 countries – inter alia US – through a broad network of subsidiaries and distribution partners.”

“The Complainant and its house mark PHOENIX CONTACT enjoys worldwide a high degree of market recognition. The company name PHOENIX CONTACT and the identical product mark are being put to substantial use since 1982 in Germany and also worldwide.”

“The Complainant’s trademark PHOENIX CONTACT is extremely well-known in the market. Consumers and professionals associate particularly serious, trusted brands with ‘Phoenix Contact’, looking back on more than 90 years of tradition and history. With total annual sales ranging at EUR 3 billion in 2022, the

Complainant is one the market leaders in f ield of electrical engineering.”

Annexed to the Complaint is a list of 191 trademark registrations owned by Complainant in various
jurisdictions for the mark PHOENIX CONTACT, either in word or stylized form, including International Reg.

No. 1125907 (registered on October 28, 2011, and operative in 70 jurisdictions).

The Domain Name was registered on February 19, 2025. The Domain name resolves to a landing page
bearing the words “Proximo lanziemento” and then providing a “Contact Us” f ield. At the bottom of

Respondent’s web page, the following notice appears: “Copyright © 2025 Phoenix Contact.”

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the
Domain Name:

(i)        the Domain Name is identical or confusingly similar to a trademark or service mark in which

Complainant has rights; and

(ii)       Respondent has no rights or legitimate interests in respect of the Domain Name; and

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

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A. Identical or Confusingly Similar

The Panel f inds that Complainant has rights in the mark PHOENIX CONTACT through registration and use demonstrated in the record. The Panel also f inds that the Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the
Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.

The Panel concludes that Respondent lacks rights or legitimate interests in connection with the Domain Name. Respondent has not come forward in this proceeding to deny any of the allegations in the Complaint, or dispute any of the evidence provided by Complainant. On the undisputed record, and on a balance of probabilities, the Panel f inds that Respondent more likely than not registered the Domain Name to

impersonate Complainant for some as yet unknown nefarious purpose. The mark PHOENIX CONTACT is distinctive inasmuch as the words “phoenix” and “contact” are not ordinarily associated with each other, except in reference to Complainant and its goods and services. Respondent’s selection of these two words in the Domain Name, with no explanation f rom Respondent, cannot be chalked up to mere coincidence.

In addition, while Complainant’s actual record evidence of the fame of its mark is thin, the fact that the mark is widely registered around the world, and that Complainant’s sales are into the billions of dollars, indicates that the PHOENIX CONTACT mark apparently enjoys some degree of renown.

Further, the Panel f inds Respondent’s “Contact Us” field to be at least consistent with, if not suggestive of, an intention to create the impression that a commercial website is forthcoming.

Finally, Respondent’s purported copyright notice suggests to the Panel that Respondent is not using the words “phoenix” and “contact” in connection with their ordinary dictionary meanings. Rather, the copyright notice tends to suggest that the website wants the reader to identify Respondent as “Phoenix Contact.”

In sum, on this undisputed record, the Panel concludes that Respondent probably registered the Domain Name with Complainant’s mark in mind and to set up a website impersonating Complainant. Such conduct does not invest Respondent with a legitimate interest in respect of the Domain Name.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable

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consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or
service mark from ref lecting the mark in a corresponding domain name, provided that Respondent has
engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes, on this undisputed record, that Respondent registered and used the Domain Name in bad faith. The Panel incorporates here its discussion above in the “Rights or Legitimate Interests” section. Based on the considerations noted above, including the distinctness and reputation of Complainant’s mark, and the composition of the Domain Name, the Panel concludes the Respondent has registered and used the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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 <phoenixcontact.ai> be transferred to Complainant.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: April 21, 2025