Phoenix Contact GmbH & Co. KG v White Rhino

WIPO Case No. D2025-0058

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Phoenix Contact GmbH & Co. KG v. White Rhino

Case No. D2025-0058

1. The Parties

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

Respondent is White Rhino, Czech Republic.

2. The Domain Name and Registrar

The disputed domain name <phoenix-kontakt.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 8, 2025. On January 8, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 8, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent (Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to Complainant on January 9, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 9, 2025.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2025. Respondent did not submit any formal response, however sent

informal communications to the Center on January 9, 10, 11, 13 and 17, 2025. The Center informed the
parties that it would proceed to panel appointment on February 7, 2025.

The Center appointed Marina Perraki as the sole panelist in this matter on February 12, 2025. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph

7.

On February 21, 2025, the Panel issued Administrative Panel Procedural Order No. 1, inviting Complainant
to amend the Complaint’s Registrar and the Mutual Jurisdiction sections to reflect the correct Registrar
details and Respondent to comment on Complainant’s submission. On February 25, 2025, Complainant filed
the second amended Complaint, per above. The Respondent did not comment on the Complainant’s

submission.

4. Factual Background

Complainant is a German company active in components, systems and solutions in the area of electrical engineering, electronics and automation. Complainant employs nearly 20,000 people worldwide and its products and services are available in more than 100 countries through subsidiaries and distribution

partners. Complainant’s house mark PHOENIX CONTACT is in use since 1982, while Complainant had total
annual sales at EUR 3 billion in 2022. Complainant maintains one of its main websites at

“

Complainant is the owner of numerous trademark registrations for PHOENIX CONTACT worldwide, including
the International Trademark registration No. 1125907, PHOENIX CONTACT (word), registered on
October 28, 2011, for goods and services in international classes 3, 6, 7, 8, 9, 16, 17, 36, 37, 38, 39, 41 and
42.

The Domain Name was registered on December 23, 2024, and at the time of filing of the Complaint led to a website, mimicking that of Complainant, prominently displaying Complainant’s logo and purportedly offering cybersecurity services (the “Website”). The Website was purportedly operated by the so-called Phoenix

Contact Academy based in Norway. However, per Complaint, no company with that name can be found at the address mentioned on the Website. Currently the Domain Name leads to an inactive website.

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 formally reply to Complainant’s contentions. On January 9, 2025, Respondent sent email communications to the Center asking “what the problem” and offering to “give up” the Domain Name, subsequently claiming his “money back” and wishing to cancel the Domain Name. On January 10 and 11, 2025, Respondent enquired whether the case was closed and on January 13, 2025, he offered to “regulate”, while on January 17, 2025, he affirmed his wish that the proceedings be closed.

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

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP

Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds the mark is recognizable within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9.

The replacement of the letter “c” of Complainant’s mark with the letter “k” is considered as intentional
misspelling of Complainant’s trademark and it does not prevent a finding of confusing similarity between the

Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.9.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the
comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.

Zhan Yequn, WIPO Case No. D2017-0275).

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted

Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, or other types of fraud can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel concludes that Respondent has registered and used the Domain Name in bad faith. Because the PHOENIX CONTACT mark had been used and registered at the time of the Domain Name’s registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226). This also takes into account the content of the Website which prominently displayed Complainant’s trademark and logo.

As regards bad faith use of the Domain Name, Complainant has demonstrated that the Domain Name was
used to resolve to the Website, which mimicked that of Complainant and prominently displayed
Complainant’s registered trademark and logo, thereby giving the false impression that it was operated by
Complainant, or a company affiliated to Complainant or an authorised partner of Complainant. The Domain
Name was therefore used to intentionally create a likelihood of confusion with Complainant’s trademark and
business as to the source, sponsorship, affiliation, or endorsement of the website it resolves to. This can be
used in support of bad faith registration and use (Booking.com BV v. Chen Guo Long, WIPO Case No.
D2017-0311; Ebel International Limited v. Alan Brashear, WIPO Case No. D2017-0001; Walgreen Co. v.
Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607;
Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; and WIPO Overview 3.0, section 3.1.4).

Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Domain Name constitutes bad faith under the

Policy.

The Panel finds that Complainant has established the third element 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 <phoenix-kontakt.com> be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: March 4, 2025