WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HYDAC Technology GmbH v. Maison Tropicale S.A.
Case No. D2007-1031
1. The Parties
The Complainant is HYDAC Technology GmbH, Sulzbach/Saar, Germany, represented by Rospatt Osten Pross, Germany.
The Respondent is Maison Tropicale S.A., The Valley, Anguilla.
2. The Domain Name and Registrar
The disputed domain name is registered with DomainDoorman, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007, and was received in hardcopy by the Center on July 24, 2007.
On July 18, 2007, the Center transmitted by email to DomainDoorman, LLC a request for registrar verification in connection with the domain name at issue. On the same date, DomainDoorman, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 July 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2007.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2007.
The Center appointed James Bridgeman as the sole panelist in this matter on August 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 is the owner of the following registered trademarks registered, inter alia, in Class 7 and used by the Complainant for goods including filters and filter elements for use as machine parts:
German registered trademark HYDAC registration number DE 1 094 781 dated February 13, 1986;
International Trademark registration HYDAC registration number IR 508 530 dated August 4, 1986 in Austria, Benelux, France, Italy, Liechtenstein, Spain and Switzerland;
Community Trademark HYDAC, registration number EU 044 347 dated April 1, 1996; and
US registered trademark HYDAC, registration number 1 604 351 dated July 3, 1990.
There is no information available about the Respondent except that submitted in the Complainant and the details provided in the Whois database. The domain name in dispute was created on February 25, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant requests that the domain name in dispute be transferred to the Complainant. The Complainant relies on its rights in the above listed registrations of its HYDAC trademark and has provided copies of the registration certificates as an annex to the Complaint.
The Complainant submits that the domain name in dispute is confusingly similar to the Complainant’s HYDAC trademark. The Complainant submits that the domain name in dispute is phonetically and visually identical to the Complainant’s registered trademark HYDAC. Conceptually the domain name is a combination of the Complainant’s well known trademark and the name of one of the products for which the trademark is registered and used by the Complainant namely “filters”.
Moreover the Complainant submits that the word-element “filters” is descriptive and thereby does not serve to distinguish the domain name in issue and the Complainant’s mark. In this regard the Complaint refers to the decisions of the panels in Parfums Christian Dior v. 1 Netpower Inc.WIPO Case No. D2000-0022 and Soci�t� des Produits Nestl� SA v. Myongjin ‘Kim, WIPO Case No. D2005-0509.
The Complainant submits that when assessing the similarity of the domain name at issue and the Complainant’s mark the suffix “.com” for the gTLD ought not be taken into account.
The Complainant submits that the Respondent has no rights or legitimate interest in the domain name. There is no evidence that the Respondent is using the domain name to make any bona fide offer of goods or services. The Respondent is not making any legitimate non-commercial or fair use of the domain name in dispute.
The Complainant submits that the Respondent has registered and is using the domain name in bad faith. In this regard, the Complainant submits that the Respondent has acquired, and is using the domain name in issue for the purposes of renting “sponsored links” to competitors of the Complainant and dealers of products competing with the Complainant’s products.
The Respondent is therefore using the domain name in dispute to divert customers seeking the Complainants original products and for the purpose of disrupting the Complainants business. The Complainant has submitted a print out of the Respondent’s website established at the address as an annex to the Complaint to illustrate the content of the Respondent’s website and the links leading to the websites of the Complainant’s competitors.
The Complainant submits that the content of the Respondent’s website is targeted at customers in the fields of automation, pneumatics, hydraulics and valves. These are the category of customers that would be looking to purchase the Complainant’s original products.
The Complainant has observed that the content on the Respondent’s website is changing constantly.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established to the satisfaction of this Panel that it has rights in the trademark HYDAC through its above listed registrations and use of the HYDAC mark in trade.
The domain name at issue consists of the word HYDAC, being the Complainant’s distinctive trademark, in combination with the word “filters”, being a descriptive element. In the view of this Panel the addition of the element “filters” does not serve to distinguish the domain name from the Complainant’s mark. Because the Complainant is engaged in the sale of filters, the addition of that element is in fact more likely to add to the risk of confusion among users of the Internet.
The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant has put forward a credible prima facie case that the Respondent has no rights or legitimate interests in the domain name in dispute. In such circumstances, the onus shifts to the Respondent to establish that it has such rights or legitimate interests.
There is no evidence that the Respondent is making any bona fide use of the domain name for the sale of goods or the provision of services and the Respondent is obviously not engaged in any non-commercial use of the domain name. The evidence is that the Respondent has established a simple one page website with little or no content except for links to the websites of certain competitors of the Complainant and dealers of products competing with the Complainant’s products. Such use, taking predatory advantage of the Complainant’s reputation and goodwill cannot be the basis for establishing any rights or interest in the domain name or mark.
It follows that the Complainant has established the second element of the test in paragraph 4(a) of the Policy also.
C. Registered and Used in Bad Faith
While the Complainant has submitted that the Respondent is renting “sponsored links” on the website to competitors of the Complainant, it has not provided any evidence that the links are sponsored. The print-out of the Respondents website, provided by the Complainant as an annex to the Complaint shows that the website appears to be a single page site that contains little more than a number of links to the websites of dealers of products competing with the Complainant’s products. There is no evidence that the owners of any of these websites have sponsored these links, have given permission to the Respondent to establish such links or are even aware that the Respondent has established such links.
The Complainant submits that the content of the Respondent’s website is targeted at Internet users that would be searching to find the Complainant’s original products in the fields of automation, pneumatics, hydraulics and valves.
HYDAC is a distinctive trademark and the Respondent has registered that name in combination with the word “filters”, being the product sold by the Complainant. The choice of the Complainants mark as the principal element in the domain name was therefore no coincidence. On the balance of probabilities the Respondent had actual knowledge of the Complainant and the Complainant’s rights and goodwill in the HYDAC mark when choosing and using the domain name and chose the mark to take predatory advantage of the Complainant’s reputation and goodwill.
The Respondent consciously chose the combination of the Complainant’s mark and the word “filters” to create a likelihood of confusion among Internet users and to misdirect Internet users who may be seeking information about the Complainant and its products away to the Respondent’s website. It is improbable that the Respondent has engaged in this activity other than with the intention of achieving some financial gain.
This Panel is therefore satisfied that by registering and using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's HYDAC trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
In the circumstances the Complainant has established the third and final element in the test in paragraph 4(a) of the Policy and is entitled to succeed in its application.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
James Bridgeman
Sole Panelist
Dated: September 6, 2007
Full & Egal Universal Law Academy