WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Copco Aktiebolag v. Nanjing Xinruikang Gongchengjixie Youxiangongsi
Case No. D2008-0192
1. The Parties
The Complainant is Atlas Copco Aktiebolag, Nacka, Sweden, represented by Atlas Copco North America LLC, United States of America.
The Respondent is Nanjing Xinruikang Gongchengjixie Youxiangongsi, Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2008. On February 7, 2008, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On February 13, 2008, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 18, 2008, the Center verified that the Complain satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for 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), a notification of Complaint and Commencement of Administrative Proceeding was transmitted by the Center to the Respondent on February 18, 2008.
In accordance with the Rules, paragraph 5(a), the due date for the Response was March 9, 2008. The Respondent did not submit any response by the deadline. Accordingly, the Centre notified the Respondent’s default on March 10, 2008.
The Center appointed Douglas Clark as the sole panelist in this matter on March 20, 2008. 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, collectively known as “Atlas Copco” and “the Atlas Copco Group” employ 25,000 people around the world. The Atlas Copco Group’s business includes development and manufacture of compressed air equipment, pneumatic tools, construction equipment, mining equipment and assembly systems. The Complainant has a number of trademark registrations, including the ATLAS COPCO brand, in many countries around the world, including in China (where the Respondent appears to be located). The Complainant has registered several domain names, such as, , , for Atlas Copco Group’s website and its subsidiaries’ websites respectively, all of which contain the word “atlascopco”.
The Respondent is the registrant of the disputed domain name . This domain name does not resolve to an active website or other online presence.
5. Parties’ Contentions
5.1 The Complainant
The Complainant contends the following:
(a) The infringing domain name is identical or confusingly similar to the Complainant’s trademark as well as its corporate name.
(b) The Respondent has no rights or legitimate interest in the infringing domain name as it is neither affiliated or associated with the Complainant, nor authorized by the Complainant to use the trademark ATLAS COPCO or to register or use any domain name incorporating any ATLAS COPCO trademark. Furthermore, there is no evidence to demonstrate the Respondent’s use of, or preparation to use the domain name in connection with a legitimate offering of goods or services prior to or since notice to the dispute. The Complainant also contends that the Respondent neither be commonly known by the infringing domain name nor is making a legitimate non-commercial or fair use of the infringing domain name. Therefore, the Respondent has no rights or legitimate interest in respect of the infringing domain name.
(c) The infringing domain name has been registered and is being used in bad faith for the following reasons：
(i) Under Section 4(b)(ii) of the policy that the domain name has been registered to prevent the trademark owner from reflecting the mark in a domain and that the Respondent has registered, in addition to the disputed domain name, several domain names incorporating third-party trademarks and/or corporate names, which is sufficient to constitute a pattern of bad faith conduct. The Complainant relies on the registration by the Respondent of the domain name and the registration by “Zhong Suo” of the domain name . The WhoIs information containing the Respondent’s email address ([…]@) is the same for these domain names. The Complainant submitted US trademark certificates covering, inter alia, industrial equipment for “Donaldson” and “Ort” in the name of Donaldson Company Inc, and Walzen Irie GmbH to support this contention.
(ii) Under Section 4(b)(iv) of the policy that the domain name registered in the name of the Respondent, creates and will continue to create a likelihood of confusion with the Complainant’s trademark, corporate name and domain name as to the source, sponsorship, affiliation or endorsement of the infringing domain name, the Respondent’s website (if any) or of a product or service at the Respondent’s location (if any). The Complainant argues that bad faith exists even though a respondent has not used the domain name and relies on numerous UDRP decisions to support this argument. The Complainant further relies on the fact the Respondent had actual or constructive knowledge of the ATLAS COPCO trademark and corporate names and domain names due to the Complainant’s worldwide fame and by the Respondents’ inactivity with respect to the domain name and failure to respond to the Complainant’s cease and desist notice.
The Complainant requests therefore that the disputed domain name be transferred in its favour.
5.2 The Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint. Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The domain name is identical or confusingly similar to the Complainant’s trademark or service mark;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant submits trademark certificates for ATLAS COPCO and device mark in (old) Class 13 in China covering, inter alia, tools as well as a trademark certificate for ATLAS COPCO and device mark covering 12 classes in the United States of America, including class 7 covering industrial tools.
For each trademark the device mark is two horizontal bars in between which the words “Atlas Copco” are written in cursive script. The horizontal bar device does not detract from the main impact of the marks which is the words “Atlas Copco”.
Therefore, the Panel finds the disputed domain to be identical or confusingly similar to the Complainant’s trademark.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. No Rights or Legitimate Interests in the Domain Name
No actual use or demonstrable preparations to use of the domain name in connection with a bona fide offering of goods or service was found before any notice to this dispute. The Respondent has not been commonly known as, nor has carried on business in any form as , and has not made a legitimate non-commercial or fair use of the infringing domain name. The Panel has not found any evidence to suggest the Respondent has rights or legitimate interests in this domain name.
Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
On the basis of the above findings and the worldwide fame of Atlas Copco demonstrated by the Complainant, the Panel has no hesitation in finding the disputed domain name was registered in bad faith. In this respect, the Panel notes that the Respondent appears from its name, Nanjing Xinruikang Gongchengjixie Youxiangongsi (which translates into English as Nanjing Xinruikang Engineering Equipment Co Ltd), to deal with engineering equipment and is therefore in the same industry as the Complainant and, as such, is likely to have known of the Complainant. In any event, Atlas Copco is a unique name and it is unlikely the Respondent could have invented the name by itself.
The key issue in this case then whether the domain name is being used in bad faith. As noted above, the Complainant relies in this regard on paragraph 4(b)(ii) and 4(b)(iv) of the Policy.
Paragraph 4(b)(ii) and 4(b)(iv) of the Policy read:
“4(b). Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
On the evidence submitted by the Complainant the Panel is not satisfied that the Complainant has made out its case in relation to paragraph 4(b)(ii). Paragraph 4(b)(ii) requires that a pattern of conduct be made out. The Panel does not consider that evidence filed by the Complainant showing the registration of or to make out such a pattern. In particular, there is insufficient evidence to show that has been registered by the Respondent.
With regard to paragraph 4(b)(iv), the Complainant has a stronger case. Although, paragraph 4(b)(iv) makes reference to “using” the domain name, numerous decisions of domain name panels and domestic courts have made it clear that there is no need for domain name to resolve to an active website for there to be use. The Complainant relies on two cases, in particular:
(a) Europcar International v. The Cutayne’s Domain (Bruce, Colleen, Matt & Evan), NAF Case No. FA105772 which held “[p]olicy 4(b) is also met by registering a domain name that will if the Respondent ever puts it in use, ultimately result in consumer confusion”.
(b) Produits Berger v. Standard Project Limited,WIPO Case No. D2002-0518 citing Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028 which held
“subparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainant’s trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well known mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name”.
To this Panel, these decisions (and those of a similar nature) are correct. The Panel further notes that previous panels have formed that the passive holding of a domain name may in appropriate circumstances amount to evidence of registration and use in bad faith. (See eg. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In the present case, the Panel has little hesitation in making such a finding given the identity between the Complainant’s famous mark and the disputed domain name, the lack of any response, and the Panel’s difficulty conceiving of any use of the disputed domain name that would not likely result in an erosion of the goodwill in the Complainant’s trademark.
The Panel further notes the English Court of Appeal in British Telecommunications Plc and another v. One in a Million Ltd and others [1998] 4 All ER 476 at 497 (per Aldous LJ) where the domain name was registered but not “used” held:
“The placing on a register of a distinctive name such as marksandspencer makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name. Such persons would not know of One In A Million Limited and would believe that they were connected or associated with the owner of the goodwill in the domain name they had registered. Further, registration of the domain name including the words Marks & Spencer is an erosion of the exclusive goodwill in the name which damages or is likely to damage Marks & Spencer Plc.”
The Panel believes this conclusion would be of similar application to the present circumstances. In this case, we have an almost identical situation. The domain name has been registered. There is no realistic or reasonable use the domain name can be put to other than to indicate a relationship with the Complainant. If anything further is needed, the fact the Respondent from its name appears to be in the same industry as the Complainant shows there is unlikely to be anything other than bad faith use of the domain name.
The Panel therefore concludes that the registration and holding of the domain name in the circumstances of this case amounts to use of the domain name by making a false representation as to a connection with the Complainant thereby eroding the Complainant’s goodwill in its trademark ATLAS COPCO.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
7. Decision
In light of the findings in paragraph 6 above, the Panel orders that the domain name be transferred to the Complainant in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules.
Douglas Clark
Sole Panelist
Dated: April 9, 2008
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