Phoenix Contact GmbH & Co. KG v White Rhino

WIPO Case No. DNL2025-0002

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Phoenix Contact GmbH & Co. KG v. White Rhino

Case No. DNL2025-0002

1. The Parties

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

Partnerschaftsgesellschaft mbB, Germany.

The registrant of the disputed domain name is White Rhino, Czech Republic (“Respondent”).

2. The Domain Name and Registrar

The disputed domain name <phoenixcontacts.nl> (the “Domain Name”) is registered with SIDN through

Namecheap, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2025. with the Domain Name.

On January 10, 2025, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named respondent and contact information in the Complaint.

The Center sent an email communication to Complainant on January 10, 2025, providing the information disclosed by SIDN, and inviting Complainant to amend the Complaint in this light. Complainant filed an amended Complaint on January 13, 2025.

The Center verified that the Complaint as amended satisfies the formal requirements of the Dispute
Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint and the proceedings commenced on January 15, 2025. In accordance with the Regulations, article 7.1, the due date for Response was February 4, 2025. The Center did not receive any response. Accordingly, the Center notified Respondent’s default on February 6, 2025. Following the notification of

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Respondent’s default, the Center received two informal email communications from Respondent on

February 6, 2025.

The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on February 11, 2025. The
Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and
Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article

9.2.

4. Factual Background

Complainant is a German company in the field of components, systems, and solutions in the area of electrical engineering, electronics, and automation, with total annual sales ranging at EUR 3 billion in 2022. Altogether, Complainant employs nearly 20,000 people worldwide and its products and services are available in more than 100 countries – inter alia in the Netherlands.

According to the evidence submitted, Complainant is the owner of multiple trademarks for PHOENIX

CONTACT, including:

- European Union Trade Mark PHOENIX CONTACT (Word), no. 1125907, registration date October 28,

2011; and

- European Union Trade Mark PHOENIX CONTACT (Figurative), no. 1125906, registration date October 28,
2011.

SIDN informed the Center that that the Domain Name was registered on December 23, 2024. The trademark registrations of Complainant were issued prior to the registration of the Domain Name.

The Domain Name at the time of the decision resolves to a website in the Russian language with the message in English “Backfinhelp. Get your money back”. As evidenced in the Complaint, the Domain Name previously resolved to a website containing Complainant’s company logo/figurative trademark and purportedly offering services in the Norwegian language on the topic of cyber security.

5. Parties’ Contentions

A. Complainant

According to Complainant, the Domain Name is confusingly similar to the PHOENIX CONTACT trademark. Complainant submits that Respondent has registered an almost identical Domain Name in order to create a likelihood of confusion. Respondent registered the Domain Name without consent and knowledge of

Complainant. In its distinctive element the Domain Name is identical to Complainant’s trademark PHOENIX
CONTACT, which creates the impression that this is one of the official homepages of Complainant.

Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant asserts that the high degree of market recognition of the trademark PHOENIX CONTACT alone suggests that the registration of the identical Domain Name is not a coincidence but was filed in awareness of the well-known trademarks of Complainant. According to Complainant, Respondent is not authorized to use the Domain Name comprising the distinctive element “phoenix contacts”. Complainant claims that Respondent obviously has no rights of their own to use the Domain Name. In addition, Complainant submits that Respondent claims that it operates the website under the Domain Name as a so-called Phoenix Contact Academy based in Norway. However, no company with the name Phoenix Contact Academy can be found at the stated address in Oslo, Norway. Instead, there is a popular area for shopping, dining, and entertainment at this address in Oslo, Norway. This all indicates that the information on the website is false

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or fictitious and that no company with the name Phoenix Contact Academy actually exists. Complainant
concludes that an authorization or legitimate interest to register the Domain Name is ruled out from all points
of view.

Complainant asserts that the Domain Name has been registered or is being used in bad faith. Complainant contends that the Domain Name is confusingly similar to Complainant’s PHOENIX CONTACT trademarks. On the website under the Domain Name, Respondent provides misleading information about their real

identity. It is suggested that there exists an Internet presence and physical presence of the company expressed by the identical adoption of Complainant’s company logo. According to Complainant, this is extremely bad faith, especially in connection with alleged cybersecurity services. Internet users are led to believe that a renowned industrial automation company is supposedly offering highly sensitive cybersecurity services, but these are apparently being offered by a fraudster using the well-known trademark PHOENIX CONTACT. The annexed screen captures of the website under the Domain Name show that Respondent’s website does not clarify that there is no relationship between Respondent and Complainant. Instead, the content misleads the public into believing that the website is owned by, connected to, or endorsed by Complainant. Complainant concludes that such intentional use of the Domain Name in an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website constitutes use of the Domain Name in bad faith.

B. Respondent

Respondent did not formally reply to Complainant’s contentions. The two email communications to the Center, as mentioned above, are largely illegible and do not contain any substantive response; however, it appears Respondent was claiming to have deleted the website resolving from the Domain Name after receiving notice of the dispute.

6. Discussion and Findings

Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:

a. the domain name is identical or confusingly similar to a trademark or tradename protected under Dutch
law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the

Regulations; and

b. the respondent has no rights to or legitimate interests in the domain name; and

c. the domain name has been registered or is being used in bad faith.

As Respondent has not filed a Response, the Panel shall rule based on the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.

A. Identical or Confusingly Similar

Complainant has established that it is the owner of European Union Trade Mark registrations for PHOENIX
CONTACT, also applicable in the Netherlands (Kingdom of the).

It is well accepted that the first element of the Regulations functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. See section 1.7 of the

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WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).1
Complainant has shown rights in respect of a trademark applicable in the Netherlands for purposes of the
Regulations. See also WIPO Overview 3.0, section 1.2.1.

The Domain Name incorporates the entirety of the PHOENIX CONTACT trademark. Previous panels under the Regulations have found that a domain name is identical or confusingly similar to a complainant’s trademark where the domain name incorporates the entirety of such trademark or where a dominant feature of the relevant mark is recognizable in the domain name. See also section 1.7 of WIPO Overview 3.0.

The addition of the letter “s” after the entirety of the PHOENIX CONTACT trademark does not change the overall impression of confusing similarity and does not prevent a finding of confusing similarity under the first element.

The country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the
Regulations, see Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008.

The Panel finds that the Domain Name is confusingly similar to Complainant’s trademark for purposes of standing in accordance with the Regulations.

Complainant has satisfied the requirements of Article 2.1(a) of the Regulations.

B. Rights or Legitimate Interests

As stated in section 2.1 of WIPO Overview 3.0, “while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

In the Panel’s opinion, Complainant has made out a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name.

At the time of the decision, the Domain Name resolves to a website in the Russian language. Based on the undisputed submission and evidence provided by Complainant, the Domain Name previously resolved to a website featuring Complainant’s logo/figurative trademark. In addition, it appears that the website under the Domain Name contains false or fictitious information and that no company with the name Phoenix Contact

Academy actually exists.

The Panel does not consider such current or prior use a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name. There is no evidence that Respondent has acquired any relevant trademark or service mark rights. In addition, based on the record presented, there

has never been any business relationship between Complainant and Respondent. There is also no

indication that Respondent is commonly known by the Domain Name.

No formal nor substantive Response to the Complaint was filed and Respondent has not rebutted

Complainant’s prima facie case.

1In view of the fact that the Regulations are substantially similar to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is

well established that both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0,
may be relevant to the determination of this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No.
DNL2008-0050).

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The Panel finds that Respondent has no rights to or legitimate interests in the Domain Name and that

Complainant has satisfied the requirements of Article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

Noting the overall circumstances of this case, the Panel finds it highly likely that Respondent knew, and further finds that Respondent in any event should have known, Complainant’s trademark at the time of registration, especially in view of the fact that the Domain Name contains the entirety of the distinctive PHOENIX CONTACT trademark with the mere addition of the letter “s”.

The Panel notes the following. Complainant has alleged that this is a case of extremely bad faith, especially trademark.

considering the purported cybersecurity services offered by Respondent. Internet users are led to believe
that a renowned industrial automation company is supposedly offering highly sensitive cybersecurity
services, but these are apparently being offered by a fraudster using the well-known trademark PHOENIX
CONTACT. This use constitutes clear evidence that Respondent has used the Domain Name to attract

In the opinion of the Panel, the use of a domain name that is confusingly similar to a well-known trademark presents a risk to the reputation of a trademark and its owner. Respondent has not denied that it has engaged in misleading practices, which the Panel expects a good faith registrant would do given Complainant’s serious contentions.

The Panel also takes into account that Responded provided fictious and false contact information when registering the Domain Name which is an additional indication of bad faith.

The Panel finds that the Domain Name has been registered and is being used in bad faith and that

Complainant has satisfied the requirements of Article 2.1(c) of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <phoenixcontacts.nl>, be transferred to Complainant.

/Dinant T. L. Oosterbaan/
Dinant T. L. Oosterbaan
Panelist
Date: February 17, 2025