Schnellecke Group AG & Co. KG, Schnellecke Logistics SE v Hulmiho

WIPO Case No. D2024-2612

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Schnellecke Group AG & Co. KG, Schnellecke Logistics SE v. Hulmiho
Ukolen, Poste restante

Case No. D2024-2612

1. The Parties

The Complainants are Schnellecke Group AG & Co. KG and Schnellecke Logistics SE, Germany, both represented by Gramm, Lins & Partner Patent- und Rechtsanwälte PartGmbB, Germany.

The Respondent is Hulmiho Ukolen, Poste restante, Finland.

2. The Domain Name and Registrar

The disputed domain name <schnellecke.group> is registered with Gransy, s.r.o. d/b/a subreg.cz (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2024.
On June 27, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On June 29, 2024, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (NEROSO Inst., s.r.o.) and contact information in the Complaint.
The Center sent an email communication to the Complainants on July 1, 2024, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the

Complaint. The Complainants filed an amended Complaint on July 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 Complaint, and the proceedings commenced on July 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2024.

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The Center appointed David Stone as the sole panelist in this matter on August 6, 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 Complainants are two German companies belonging to the same group of companies operating a business which was established in 1939, and which provides transport and logistics services in Germany and worldwide. Between them, the Complainants have 30,000 employees and an annual turnover in excess of two billion euros.

Among others, the Complainants between them own the following registered trademarks (the “Marks”):

- : German trademark registration no. 30538207 registered on December 14, 2005, in

international classes 12, 37, 39, and 40 (the named proprietor is the predecessor company of Schnellecke
Group AG & Co. KG);

- SCHNELLECKE: German trademark registration no. 302016106281 registered on October 17, 2016 in international classes 6, 9, 16, 35, 37, 38, 39, 40, and 42 (Schnellecke Logistics SE); and

- : International Trademark registration no. 1375208 registered on January 3, 2017 in

international classes 6, 9, 16, 35, 37, 38, 39, 40, and 42 (Schnellecke Logistics SE).

The Complainants have used, in relation to their transport and logistics services, the sign “SCHNELLECKE” since June 1, 1939 and the sign “SCHNELLECKE GROUP” since August 27, 2007. The Complainants both use the domain name <schnellecke.com>, and both use the Marks either as an owner or a licensee.

The disputed domain name was created on April 20, 2024. At the date of the decision, the Respondent is hosting a parked page comprising pay-per-click (“PPC”) links at the disputed domain name.

5. Parties’ Contentions

A. Complainants

The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

The Complainants contend that, under the first element, the dominant feature of the trademarks is the word elements “Schnellecke” and “Schnellecke Group,” and the dominant feature of the disputed domain name is the word element “Schnellecke,” and the “.” is perceived as a surrogate for a blank space due to technical

reasons in the allocation of domain names. Therefore, the Complainants submit, the disputed domain name
is identical to “Schnellecke Group” and identical or at least confusingly similar to “Schnellecke”.

The Complainants contend that, under the second element, despite an extensive and exhaustive research, (i) there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services and (ii) there is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. The Respondent has no legal or business relationship with the Complainants, nor has there been any such relationship in the past, and the Respondent has not been permitted to use the Complainants’ Marks.

The Complainants contend that, under the third element, (i) there are circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants or to a competitor of the Complainants, for

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valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name; (ii) the disputed domain name was registered in order to prevent the Complainants from reflecting the Marks in a corresponding domain name; and (iii) the Respondent intentionally attempted to

attract for commercial gain, Internet users to the Respondent’s web site or other on-line location, by creating

a likelihood of confusion with the Complainants’ Marks.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii)

it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.1.

The Panel notes that the Complainants are members of the same group of companies, they both use the

Marks either as owner or licensee, and they share the same domain name <schnellecke.com>.

The Panel finds that the Complainants have a specific common grievance against the Respondent, the is equitable and procedurally efficient to permit the consolidation.

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 3.0, section 1.7.

The Complainants have 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 entirety of each of the Marks is reproduced within the disputed domain name. Accordingly, the disputed
domain name is identical or confusingly similar to each of the Marks for the purposes of the Policy. WIPO
Overview 3.0, section 1.7.

In the case of the Marks comprising “SCHNELLECKE” without the term “GROUP”, the generic Top-Level Domain (“gTLD”) “.group” is viewed as a standard registration requirement and as such is generally disregarded for the confusing similarity comparison between the disputed domain name and the Marks for the purposes of the Policy. WIPO Overview 3.0, section 1.11.1. However, in the case of the Mark comprising SCHNELLECKE GROUP, the second-level portion of the disputed domain name in combination with the gTLD contain the relevant Mark, and the Panel considers the disputed domain name in its entirety for purposes of assessing identity or confusing similarity, being the disputed domain name identical to the mentioned Mark. WIPO Overview 3.0, section 1.11.3.

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.

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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.

Applying paragraph 4(c) of the Policy, panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

The Panel finds that the Complainants’ Marks have considerable goodwill and reputation for transport and logistics services. The Panel accepts the Complainants’ evidence of the parked page at the disputed domain name showing PPC links, including those offering services relating to the transportation of goods. Such PPC links compete with or capitalize on the reputation and goodwill of the Marks.

The Panel finds the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainants’ 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.

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 the Respondent registered the confusingly similar disputed domain name, which differs from the Complainants’ domain name by just “.group”. The Respondent registered the domain name with a postal address in Finland. The Respondent hosts at the disputed domain name a parked page comprising PPC links that compete with or capitalize on the reputation and goodwill of the Complainants’ Marks.

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.

Particular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name, (ii) the chosen TLD, (iii) the content of any website to which the domain name directs, and (iv) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name. WIPO Overview 3.0, section 3.2.1.

Panels have moreover found that evidence of a respondent seeking to cause confusion supports a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. WIPO Overview 3.0, section 3.1.4.

Panels also view the provision of false contact information as an indication of bad faith. WIPO Overview 3.0, section 3.6.

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The disputed domain name comprises the distinctive and dominant element of each of the Marks and is identical or confusingly similar to each of the Marks for the reasons already discussed. In addition, the Panel finds that the chosen gTLD, “.group”, is also strongly suggestive of the Respondent seeking to cause confusion because it results in the disputed domain name displaying a trading name of the Complainants (“SCHNELLECKE GROUP”).

Further, the Panel finds that the Respondent’s use of a non-specific postal address and its use of consecutive numbers in place of its postal code and telephone number was most likely an attempt to conceal the Respondent’s identity and is indicative of bad faith.

The foregoing, together with the Respondent’s clear absence of rights or legitimate interests coupled with no credible explanation of the Respondent’s choice of domain name (other than to take advantage of the goodwill and reputation of the Marks), is demonstrative of bad faith.

Furthermore, the Respondent has not attempted to refute any of the Complainants’ contentions, which in the
circumstances of the case casts additional doubt on the nature of its conduct. WIPO Overview 3.0, section
3.2.1.

Having reviewed the record, the Panel concludes that the actions of the Respondent in choosing the disputed domain name and using the disputed domain name to display PPC links were aimed at attracting, for commercial gain, Internet users by creating a likelihood of confusion with the Complainants’ Marks. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith.

The Panel finds that the Complainants have 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 <schnellecke.group> be transferred to the Complainants.

/David Stone/ David Stone Sole Panelist Date: August 20, 2024