WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Copco Aktiebolag v. Andreas Clara
Case No. D2007-0039
1. The Parties
The Complainant is Atlas Copco Aktiebolag, Nacka, Sweden, represented by Fredrik Lund, United States of America.
The Respondent is Andreas Clara, Lautertal Odenwald, Germany.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Schlund + Partner (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on January 11, 2007 and in hardcopy on January 16, 2007. On January 12, 2007, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the Domain Name at issue. On January�15,�2007, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center, having determined that the registration agreement of the disputed Domain Name is in German according to the information received from the concerned Registrar, sent a notification on the Language of Proceeding to the Complainant on January 22, 2007, and requested the Complaint to be translated into the German language. In response to the notification on the Language of Proceeding, the Complainant made submissions that the proceeding should be held in English. On January 24, 2007, the Center decided to accept the Complaint in the English language, to accept a response in either the German or the English language, and to allow the Panel to make the decision as to the correct language of the proceeding. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January�24,�2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February�13,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February�15,�2007.
The Center appointed Dr. Bernhard F. Meyer-Hauser as the sole panelist in this matter on February�23,�2007. 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 was incorporated in Sweden in 1873. The Complainant and its subsidiaries, which collectively are known as the Atlas Copco Group, employ over 20,000 people around the world. The Atlas Copco Group has more than 50 production facilities in about 20 countries. It develops and manufactures compressors, industrial tools, construction and mining equipment, and assembly systems.
The Complainant is the owner of various registered trademarks and service marks in many countries around the world, including for the mark ATLAS COPCO. In Germany, the apparent residence of the Respondent, the mark ATLAS COPCO was registered in 1978.
The Respondent is an individual domiciled in Germany.
The Domain Name was registered on April�4,�2006.
5. Parties’ Contentions
A. Complainant
The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
1. The Domain Name is identical and confusingly similar in its substantive part to the trademark in which the Complainant has rights. The suffix “24” is not sufficient to distinguish the Respondent’s Domain Name from the Complainant’s mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
a) The Respondent has not been commonly known by the Domain Name.
b) The Respondent has never been authorized by the Complainant to use the ATLAS COPCO trademark.
c) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Respondent is not using the disputed Domain Name in connection with any bona fide offering of goods or services.
3. The Domain Name was registered and is being used in bad faith:
a) The Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant or a competitor.
b) The Respondent has registered, in addition to the Domain Name, several domain names that incorporate third-party trademarks and/or corporate names. Registration of three or more domain names incorporating third party trademarks is sufficient to constitute a pattern of bad faith conduct.
c) The Domain Name creates a likelihood of confusion with Complainant’s trademark and corporate name.
The Complainant requests the Panel to order a transfer of the Domain Name from the Respondent to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complaint was submitted in the English language. According to the registrar, the language of the registration agreement for the disputed Domain Name is German.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decides otherwise. It is noted, however, that the spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors (see Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989). In the present case, the Complainant has requested the proceedings to be conducted in English and the Respondent has not participated in this proceeding or objected English to be the language of proceeding. Furthermore, the website that resolves to the disputed Domain Name is in English and thus it may be inferred that the Respondent has sufficient ability to communicate in the English language.
Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.
Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s 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) Respondent’s Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name combines the registered trademark ATLAS COPCO in its entirety with the suffix “24”. The suffix “24” does not render the Domain Name significantly different from the Complainant’s ATLAS COPCO trademark.
The Panel finds that the Complainant, therefore, has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of a Respondent in the Domain Name:
(i) before any notice was given to the Respondent of the dispute, the Respondent used, or demonstrably 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even though it has not acquired any trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant asserts that the Respondent was never authorized to register the ATLAS COPCO trademark or any combinations thereof.
There is no material before the Panel to indicate that the Respondent is making a legitimate non-commercial or fair use of the Domain Name. The website at the disputed Domain Name has no apparent purpose and appears to be inactive as it is parked at for the purpose of sale or pay-per-click revenue. The case file does not include any evidence suggesting a bona fide offering of goods or services, or a non-commercial or other fair use of the Domain Name. The Respondent is named “Andreas Clara” and there is no indication that the Respondent has been previously known under the Domain Name.
For the reasons set forth above and in the absence of a rebuttal by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in the sense of paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Domain Name has been used and registered in bad faith if:
(i) circumstances indicating that Respondent has registered and has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The Respondent registered a domain name reflecting a trademark (ATLAS COPCO) without itself having any apparent right to use such trademark. The Respondent offers to sell the disputed Domain Name through an auction web site, clearly demonstrating its intention to maximize the revenues arising from the sale of the disputed Domain Name. An offer of sale to the general public of a domain name containing a third party’s trademark clearly indicates bad faith.
Absent any visible right or legitimate interest of Respondent in the disputed Domain Name, and absent any conceivable good faith use, the Panel concludes that the Respondent’s sole intention appears to be a passive holding of the Domain Name in the interest of selling it. Such behaviour, which is preventing the Complainant from reflecting its trademark in a corresponding domain name, indicates bad faith.
To summarize, the Panel finds Respondent has registered and is holding the Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name shall be transferred to the Complainant.
Dr. Bernhard F. Meyer-Hauser
Sole Panelist
Date: March 9, 2007
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