WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Unimin Corporation v. Web Advertising, Corp.
Case No. D2007-1044
1. The Parties
The Complainant is Unimin Corporation, New Canaan, United States of America, represented by an internal representative.
The Respondent is Web Advertising, Corp., Kings Court, Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with BelgiumDomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2007. On July 20, 2007, the Center transmitted by email to BelgiumDomains, LLC a request for registrar verification in connection with the Domain Name. On July 21, 2007, BelgiumDomains, 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 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2007.
The Center appointed Steven A. Maier as the sole panelist in this matter on September 5, 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 a Canadian producer of industrial minerals.
The Respondent registered the Domain Name on July 3, 2007.
5. Parties’ Contentions
A. Complainant
The Complainant submits the following:
(1) It is the world’s largest producer of industrial minerals, operating from locations in eight countries.
(2) Its subsidiary Unimin Canada Ltd is a leading supplier of industrial minerals in Canada.
(3) It is the proprietor of the registered trademarks UNIMIN under number 1604208 in the United States of America and number TMA433822 in Canada.
(4) The name “Unimin” has been in use since 1979 and is a distinctive identifier of the Complainant. A simple Google search for “Unimin” produces 96,000 results all of which refer to the Complainant and “Unimin Canada” produces 22,000 results all of which refer to its Canadian subsidiary.
(5) The Domain Name is confusingly similar to the Complainant’s mark. The insertion of the term “canada” after “unimin” does not distinguish it and in fact increases the likelihood of confusion with the Complainant’s Canadian subsidiary.
(6) It is inconceivable that the Respondent could have registered the Domain Name without being aware of the Complainant’s mark.
(7) The Respondent has no rights or legitimate interest in respect of the Domain Name. It is not an authorized licensee, distributor or dealer of the Complainant. It is not a holder of any similar trademark, nor does it does not offer its own goods or services under any similar mark.
(8) The Domain Name was registered and is being used in bad faith. In response to an inquiry from the Complainant the Respondent offered to sell it the Domain Name for up to USD 2,900 (subsequently reduced to USD 1,250).
(9) The Respondent has been the subject of at least six prior UDRP complaints. In none of those complaints has it filed a response and in all cases it was found to have acted in bad faith and the domain name was transferred.
(10) The Respondent’s own website states that it has developed custom software to register generic domain names whose registrations have lapsed and that it does not individually review every such domain name.
(11) The above suggests that the Respondent is a “cybersquatter” who deliberately registers domain names based on the intellectual property of others with a view to utilizing those domain names for profit.
(12) The Complainant seeks a transfer of the Domain Name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has both registered and unregistered trademark rights in the mark UNIMIN.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s mark. The term “unimin” is distinctive and the addition of the descriptive and geographical term “canada” is insufficient to avoid confusion of the Domain Name with the Complainant’s mark.
B. Rights or Legitimate Interests
The Panel accepts the Complainant’s submissions and finds that the Respondent has demonstrated no rights or legitimate interest in the Domain Name. The Respondent has declined to file a Response in which any rights or legitimate interests might have been asserted and none are apparent from the evidence available to the Panel.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
In the view of the Panel, the determining factor in this case is that the mark UNIMIN is a highly distinctive term and, on the evidence, exclusively referable to the Complainant. While there is no objection to a domain name trader registering generic names per se, this Domain Name in this case is not generic.
In the absence of any explanation from the Respondent, the Panel infers that the Respondent registered the name in the knowledge that Internet users would assume it to refer to the Complainant, or more particularly its Canadian subsidiary. In view also of the Respondent’s offer to sell the Domain Name to the Complainant for (initially) USD 2,900, the Panel finds that, for the purposes of paragraph 4(b)(i) of the UDRP, that the Respondent acquired the Domain Name primarily for the purpose of selling the registration to the Complainant for valuable consideration in excess of its documented out-of-pocket costs.
The Panel’s finding of bad faith registration and use is also influenced by the Respondent’s failure to file a Response in this case against a background of a pattern of prior abusive registrations on the part of the Respondent.
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.
Steven A. Maier
Sole Panelist
Dated: September 19, 2007
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