Schaeffler Technologies AG & Co. KG v Lomakin Dmitrij Sergeevich, Dmitrij

WIPO Case No. D2024-4441

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Schaeffler Technologies AG & Co. KG v. Lomakin Dmitrij Sergeevich, Dmitrij
Sergeevich Lomakin

Case No. D2024-4441

1. The Parties

The Complainant is Schaeffler Technologies AG & Co. KG, Germany, represented by Bettinger Scheffelt

Rechtsanwälte, Germany.

The Respondent is Lomakin Dmitrij Sergeevich, Dmitrij Sergeevich Lomakin, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <schaeffler.store> (the “Domain Name”) is registered with NameSilo, LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2024. connection with the Domain Name. On October 30, 2024, 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 (See PrivacyGuardian.org) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2024, 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 amended Complaint on November 5, 2024.

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 the Respondent of the paragraph 5, the due date for Response was November 26, 2024. The Respondent did not submit a formal response. On October 31, 2024, and November 1, 2024, the Respondent sent email communications to the Center, the latter in which it offered the Domain Name to the Complainant.

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On November 4, 2024, the Complainant sent an email communication informing that it did not agree with the
Respondent’s settlement proposal. Thus, the Complainant requested that the proceedings be continued.

The Center appointed Piotr Nowaczyk as the sole panelist in this matter on November 29, 2024. 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 part of Schaeffler Group, a German developer and manufacturer of rolling bearings, plain bearings, and linear systems, as well as a supplier of high-precision products, components and systems to the automotive, aviation and aerospace industries. The Complainant was founded in 1946. Currently, Schaeffler Group employs over 80,000 people at 180 locations worldwide. As of 2022, the turnover of Schaeffler Group amounted to over EUR 15 billion.

The Complainant is the owner of numerous SCHAEFFLER trademark registrations, including:

- the European Union Trade Mark Registration for SCHAEFFLER (word) No. 004914107, registered on
January 15, 2008; and

- the International Trademark Registration for SCHAEFFLER (word) No. 917515, registered on
March 20, 2006.

Moreover, the Complainant is the owner of the International Trademark Registration for LUK (figurative) No.
731625, registered on November 17, 1999, for such goods as, inter alia, hydraulic pumps and motors,
hydraulic accessories and bearings.

The Complainant is also the owner of numerous domain names incorporating the SCHAEFFLER trademark, such as <schaeffler.com>.

Furthermore, the Complainant is the owner of a brand Top-Level Domain “.schaeffler”.

The Domain Name was registered on August 22, 2024.

As of the date of this Decision, as well as at the time of submitting the Complaint, the Domain Name has resolved to an online store purportedly selling the Complainant’s products in the Russian Federation (the “Website”).

5. Parties’ Contentions

A. Complainant

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

First, the Complainant contends that the Domain Name is identical to the trademark in which the

Complainant has rights.

Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the

Domain Name.

Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions. On October 31, 2024, the Respondent sent
an informal email communication to the Center stating, inter alia, “What do we need to do to satisfy your
complaint? Sell you the domain?”. On November 1, 2024, the Respondent sent a second informal email
communication to the Center stating, inter alia, “The plaintiff wants to suspend the proceedings and settle the
issue. We’re ready to transfer the domain rights and assist in transferring the domain for you. The cost of

this service is 15,000 USDt”.

6. Discussion and Findings

Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:

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

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

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

The requested remedy may only be granted if the above criteria are met. At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

Under the first element, the Complainant must establish that the Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant holds valid SCHAEFFLER trademark registrations. The Domain Name incorporates this trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to that trademark. See PepsiCo,

Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No.

D2003-0696.

The generic Top-Level Domain (“gTLD”) “.store” in the Domain Name is viewed as a standard registration
requirement and as such is typically disregarded under the first element test. See section 1.11.1 of the
WIPO Overview 3.0.

Given the above, the Panel finds that the Domain Name is identical to the Complainant’s SCHAEFFLER trademark for purposes of the Policy. In sum, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Under the second element, the Complainant must prove that the Respondent has no rights or legitimate interests in the Domain Name.

A right or legitimate interest in the Domain Name may be established, in accordance with paragraph 4(c) of the Policy, if the Panel finds any of the following circumstances:

(i)        that the Respondent has used or made 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 prior to the
dispute; or

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(ii)       that the Respondent is commonly known by the Domain Name, even if the Respondent has not

acquired any trademark rights; or

(iii) that the Respondent is 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.

Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.

On the contrary, it results from the evidence on record that the Complainant’s SCHAEFFLER trademark registrations predate the Respondent’s registration of the Domain Name. There is no evidence in the case record that the Complainant has licensed or otherwise permitted the Respondent to use the SCHAEFFLER trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.

Moreover, it results from the evidence on record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use of the Domain Name. On the contrary, the Domain Name resolves to the Website purportedly offering for sale the Complainant’s products, as well as prominently featuring the Complainant’s SCHAEFFLER and LUK trademarks together with the Complainant’s official marketing materials (e.g. the pictures of the Complainant’s premises). Such use of the Domain Name does not confer rights or legitimate interests on the Respondent as it falsely suggests an association with the Complainant.

The Respondent could make a bona fide offering of goods and services as a reseller or distributor of the Complainant’s products, and thus have a legitimate interest in the Domain Name, if this use meets certain requirements as set out in Oki Data Americas, Inc. v ASD, Inc., WIPO Case No. D2001-0903. While it does not result from the case record that the Respondent is authorized to resell or distribute the Complainant’s products, taking into consideration the nature of the Domain Name as compared to the trademark, the Panel will for completeness analyze the “fair use” factors enumerated under the above-referenced “Oki Data test”. These requirements are that: (1) the Respondent must actually be offering the goods or services at issue; (2) the Respondent must use the Website to sell only the trademarked goods or services, otherwise, it could be using the trademark to bait Internet users and then switch them to other goods or services; (3) the Website must accurately disclose the Respondent’s relationship with the trademark owner; and (4) the Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

In the present case, the above referred requirements are not met. The Domain Name and the Website at least falsely suggest an affiliation with the Complainant and its SCHAEFFLER trademark. The Panel believes that the use of the Complainant’s trademark in the Domain Name and on the Website, which also reproduces the Complainant’s figurative marks, misleads Internet users regarding the lack of relationship between the Respondent and the Complainant, as Internet users may falsely believe that the Respondent is an entity associated with the Complainant. At the same time, the relationship between the Respondent and the Complainant (or a lack thereof) is not disclosed on the Website. This further perpetuates the false impression of a relationship between the Respondent and the Complainant.

Moreover, the Complainant alleges that the products offered on the Website are highly likely to be counterfeit, and unauthorized by the Complainant, as the Complainant claims it has ceased deliveries of its products to the Russian Federation and sold its business in the country.

Finally, noting the construction of the Domain Name which consists exclusively of the Complainant’s implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

Given the above, there are no circumstances in evidence which could demonstrate, pursuant to paragraph
4(c) of the Policy, any rights or legitimate interests of the Respondent in respect of the Domain Name. Thus,

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there is no evidence in the case record that refutes the Complainant’s prima facie case. In sum, the Panel

finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Under the third element, the Complainant must prove that the Domain Name has been registered and is being used in bad faith.

Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See section 3.1 of the WIPO Overview 3.0.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes, without limitation:

(i)        circumstances indicating the domain name was registered or acquired primarily for the purpose of

selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii)       circumstances indicating that the domain name was registered in order to prevent the owner of a

trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct;
or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for

commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion
with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a
product or service on a website or location.

As indicated above, the Complainant’s rights in the SCHAEFFLER trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration. This finding is supported by the content of the Website allegedly

offering for sale the Complainant’s products, as well as prominently displaying the SCHAEFFLER trademark together with the Complainant’s official images. Moreover, it has been proven to the Panel’s satisfaction that the Complainant’s SCHAEFFLER trademark is well-known and unique to the Complainant, at least for
automative parts. Thus, the Respondent could not reasonably ignore the reputation of goods under this
trademark. In sum, the Respondent, more likely than not, registered the Domain Name with the expectation
of taking advantage of the reputation of the Complainant’s SCHAEFFLER trademark.

Furthermore, as previously noted, the Domain Name has been used in bad faith by the Respondent to resolve Internet users to the Website. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to this Website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Website.

Finally, the composition of the Domain Name, being identical to the Complainant’s SCHAEFFLER trademark, is a further indication of bad faith in these circumstances.

For the reasons discussed above, the Panel finds the third element of the Policy has been established.

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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 <schaeffler.store> be transferred to the Complainant.

/Piotr Nowaczyk/
Piotr Nowaczyk
Sole Panelist
Date: December 13, 2024