Schaeffler Technologies AG & Co. KG v Paul Kesta

WIPO Case No. D2025-1911

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Schaeffler Technologies AG & Co. KG v. Paul Kesta

Case No. D2025-1911

1. The Parties

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

SCHEFFELT Partnerschaft mbB, Germany.

The Respondent is Paul Kesta, Italy.

2. The Domain name and Registrar

The disputed domain name <schaefflergroups.com> is registered with One.com A/S (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on May 22, 2025, 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 May 23, 2025.
2025. On May 13, 2025, the Center transmitted by email to the Registrar a request for registrar verification

in connection with the disputed domain name. On May 14, 2025, the Registrar transmitted by email to the

On May 22, 2025, the Center informed the Parties in Italian and English, that the language of the registration
agreement for the disputed domain name is Italian. On May 23, 2025, the Complainant requested that
English be the language of the proceeding. The Respondent did not submit any comment on the

Complainant’s submission.

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 in Italian and English of the Complaint, and the proceedings commenced on May 26, 2025. In accordance with the Rules,

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paragraph 5, the due date for Response was June 15, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on June 17, 2025.

The Center appointed Mladen Vukmir as the sole panelist in this matter on June 20, 2025. 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 75 years ago, also known as Schaeffler Group, a publicly listed family-owned global supplier to the automotive and mechanical engineering sectors.

The Complainant is the owner of numerous SCHAEFFLER trademarks, registered in various jurisdictions, including SCHAEFFLER (word), International Registration number 917515, registered on March 20, 2006, for goods in International Classes (“ICs”) 7, 8, 9, 11, and 12; and SCHAEFFLER (word), European Union Trade Mark number 004914107, registered on January 15, 2008 for goods in ICs 7, 9, 11, and 12

(“SCHAEFFLER trademark”).

The Complainant is the owner of numerous domain names consisting of its SCHAEFFLER trademark. The Complainant’s domain names <schaefflergroup.com>, <schaeffler-group.cam>, and <schaeffler-group.cn>, are directed to the Complainant’s official website created under the Complainant’s domain name

<schaeffler.com>, which was registered before the disputed domain name.

The Complainant is the owner of the “.schaeffler” Brand Top-Level Domain.

The disputed domain name was registered on February 8, 2025. Prior to filing of the Complaint, the disputed domain name resolved to a website containing the announcement: “Hello world! Welcome to WordPress. This is your first post[….]”. At the time of filing the Complaint, the disputed domain name resolved to an inactive website. Mail Exchange (“MX”) records in connection to the disputed domain name have been activated.

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 disputed domain name.

Notably, the Complainant contends that:

(i) The Complainant is the owner of the reputable trademark SCHAEFFLER which is based on the family continuously as its business identifier. The Complainant has registered and used its trademark SCHAEFFLER since 2006. The Complainant employs over 80,000 people at 180 locations worldwide, and the Complainant’s turnover amounted to over EUR 15 billion in 2022. The Complainant promotes its products and services in various languages on its website “ The Complainant has made substantial investments to develop a strong presence online by being active on various social media platforms.
name of the founders of the Complainant, two brothers, Dr. Wilhem Schaeffler and Dr.-Ing. E.H. Gorg

(ii) The Complainant contends that the disputed domain name is confusingly similar to its SCHAEFFLER trademark, as it incorporates it entirely. The addition of the descriptive term “groups” does not prevent a finding of confusing similarity.

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(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not granted any authorization for the Respondent to make use of its SCHAEFFLER trademark, in the disputed domain name or otherwise. The Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services, nor is it commonly known by the disputed domain name.

(iv) The disputed domain name was registered and is being used in bad faith. The Complainant’s name. SCHAEFFLER trademark is based on the family name, is highly distinctive and well-known throughout the world. Prior UDRP panels have recognized the strength and reputation of the Complainant’s SCHAEFFLER trademark which is solely connected with the Complainant and does not have any generic or descriptive meaning. The Complainant submits that the Respondent’s use of a proxy service to register the disputed domain name further indicates the Respondent’s bad faith and its intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights. The circumstances of the present case are sufficient to establish bad faith passive holding of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issue - Language of Proceeding

Pursuant to paragraph 11 of Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the panel to determine otherwise. According to the information that Registrar provided to the Center on May 14, 2025, the language of the Registration Agreement of the disputed domain name is Italian. Based on Paragraph 11(a) of Rules, the Complainant requested that the language of the proceeding be English for the following reasons:

i) Nature of the disputed domain name: the disputed domain name contains the English term “groups”,
suggesting that the Respondent is familiar with the English language and intends to provide English content

under the disputed domain name.

ii) Website content available under the disputed domain name has been in English, indicating the
Respondent’s capability to understand and use English.

iii) Efficiency and fairness: Conducting the proceeding in English avoids unnecessary delay and expense for the Complainant, who has no knowledge of the language in which the registration agreement was concluded.

iv) The Respondent’s behaviour: If the Respondent fails to object or to participate, it is presumed they suffer no prejudice from use of English. If the Respondent does participate, they have the opportunity to raise any objection to the language chosen.

Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

In the case at hand, the language of the Registration Agreement of the disputed domain name is Italian. The Complainant submitted a request that the language of the proceeding be English, and the Respondent did not submit any comment about the language of the proceeding. The Panel notes that, based on the documents and statements provided by the Complainant (which have not been challenged by the

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Respondent), the Respondent appears to be able to understand English and to communicate in such
language. The Respondent was given a fair opportunity to present its case and will not be prejudiced if
English is chosen as the language of the proceeding. On the other hand, the Complainant would be unduly
burdened if required to translate its submissions into Italian. In view of the circumstances of the case, the

Panel finds that English is the appropriate language of this proceeding.

6.2. Substantive Issues

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 the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of SCHAEFFLER trademark is reproduced within the disputed domain name. Accordingly, the
disputed domain name is confusingly similar to the trademark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

The disputed domain name consists of the Complainant’s SCHAEFFLER trademark followed by term “groups”. Where the relevant trademark is recognizable within the disputed domain name, adding other terms (whether descriptive, geographical, meaningless, or otherwise), would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8.

The generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and as such may be disregarded under the first element confusing similarity test. WIPO Overview 3.0 section 1.11.1.

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 the 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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

There is no relationship between the Complainant and the Respondent which is apparent from the records.
The Respondent is not a licensee of the Complainant, nor is it affiliated with the Complainant. The

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Complainant has not granted any authorization for the Respondent to make use of its SCHAEFFLER
trademark, in disputed domain name or otherwise. There is no evidence nor is it otherwise apparent to the
Panel that the Respondent uses or is preparing to use the disputed domain name in connection with a bona
fide offering of goods or services nor as a legitimate noncommercial or fair use of the disputed domain name.

There is no indication that the Respondent is commonly known under the disputed domain name.

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.

In the present case, the Panel notes that prior to the filing of the Complaint the disputed domain name resolved to a website containing the announcement: “Hello world! Welcome to WordPress. This is your first post. Edit or delete it, then start writing[….]”. At the time of filing the Complaint the disputed domain name resolved to an inactive website, however MX records in connection to the disputed domain name are active.

Having in mind the circumstances and evidence presented, the Panel finds the Complainant’s
SCHAEFFLER trademark to be distinctive and well-known. The Panel is of the opinion that the Respondent
has registered and used the disputed domain name while being aware of the Complainant and its well-known
SCHAEFFLER trademarks.

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.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3.

Although panelists will look at the totality of the circumstances in each case, factors that have been
considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or
reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any
evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false
contact details, and (iv) the implausibility of any good faith use to which the domain name may be put.
WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s SCHAEFFLER trademark, the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Respondent decided to register and use the disputed domain name that entirely incorporates the Complainant’s SCHAEFFLER trademark with a descriptive term also used by the Complainant to designate its corporate structure, without any authorization from the Complainant. Such Respondent’s action indicates an intent to exploit the Complainant’s established reputation and goodwill. Given the Complainant’s online presence, it is implausible that the Respondent was unaware of the Complainant’s rights to the SCHAEFFLER trademark at the time of registration of the disputed domain name. The disputed domain name containing the Complainant’s SCHAEFFLER trademark followed by a descriptive term “groups” gives the false impression that the disputed domain is associated with the Complainant, known in the market as Schaeffler Group.

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Moreover, the Complainant holds numerous domain names containing its SCHAEFFLER trademark followed by term “groups”, so the impression is that the Complainant owns or manages the disputed domain name which is almost identical to the Complainant’s <schaefflergroup.com> domain name. Although the disputed domain does not resolve to an active website, it has active MX function that might potentially be used for phishing or some other illegal activities.

Additionally, the Respondent's use of privacy shield to conceal its identity and the passive holding of the domain name, no evidence of any good-faith use, reinforce the conclusion of bad faith. These factors collectively support the finding that the disputed domain name was registered and used in bad faith, in line with the criteria outlined in Paragraphs 4(a)(iii) and 4(b) of the Policy.

Finally, the Panel draws adverse inferences from the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for. WIPO Overview 3.0, section 4.3.

The Panel finds that the 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 disputed domain name <schaefflergroups.com> be transferred to the Complainant.

/Mladen Vukmir/
Mladen Vukmir
Sole Panelist
Date: July 4, 2025