WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlas Copco Aktiebolag v. PT. Indolinux Nusantara
Case No. D2008-0538
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 PT. Indolinux Nusantara, Jakarta, Indonesia.
2. The Domain Name and Registrar
The disputed domain name is registered with GKG.NET, INC (formerly GK Group LLC).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2008. On April 9, 2008, the Center transmitted by email to GKG.NET, INC (formerly GK Group LLC) a request for registrar verification in connection with the domain name at issue. On April 9, 2008, GKG.NET, INC (formerly GK Group 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 April 14, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 6, 2008
The Center appointed Adam Samuel as the sole panelist in this matter on May 14, 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 is a Swedish corporation which was founded in 1873. It owns trademark registrations for the mark ATLAS COPCO in Indonesia (registration numbers 438456 and 438457), Sweden (148653) and United States of America (1526505). The dates of registration were respectively February 10, 2000, September 13, 1974 and February 28, 1989. The Complainant owns the domain name . The disputed domain name was created on February 13, 2007.
5. Parties’ Contentions
A. The Complainant
These are the Complainant’s contentions. The Panel does not necessarily accept them in their entirety.
The only difference between the disputed domain name and the Complainant’s trademark is the addition of the geographic indicator “indo”. That is not enough to avoid confusion between the Complainant’s trademark and the domain name.
The Respondent is not associated with the Complainant and has no rights or legitimate interest in the disputed domain name. It is not commonly known by the disputed domain name. It registered the domain name several decades after the Complainant first registered its trademark. To the Complainant’s knowledge, the Respondent has never used or prepared to use the domain name in dispute in connection with a bona fide offering of goods or services prior to receiving a cease and desist letter from the Complainant on February 15, 2007. The webpage to which the disputed domain name resolves consists merely of a reproduction of the Complainant’s trademark and the word “Welcome”.
The disputed domain name creates and will continue to create a likelihood of confusion with the Complainant’s trademark, corporate name and domain names as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Visitors to the website to which the disputed domain name resolves are expecting to arrive at a website of the Complainant. Instead, they are diverted to an online location with no relation whatsoever to the Complainant.
The disputed domain name contains in its entirety the Complainant’s trademark. The Complainant’s trademark is a coined word or words, has been in use for a substantial time prior to the registration of the disputed domain name and is a well known mark. The Respondent has alleged no good faith basis for use by it of the disputed domain name. Moreover, the domain name in dispute is so obviously connected with the Complainant that the use or registration by anyone other than the Complainant suggests opportunistic bad faith. The fact that the Respondent registered the domain name in dispute, which is virtually identical to the Complainant’s trademark and corporate name, and which is a coined term made up by the Complainant, plus the fact that the Respondent has (without authorization) posted the Complainant’s trademark on the website to which the Domain name in dispute resolves, indicates that the Respondent had actual knowledge of the Complainant’s trademark and/or corporate name. Therefore, the Respondent in the instant case has registered and is using the domain name in dispute in bad faith.
The Respondent’s bad faith is also evidenced by the Respondent’s inactivity with respect to the disputed domain name and the Respondent’s failure to respond to the Complainant’s cease and desist notice.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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 disputed domain name consists of the Complainant’s trademark followed by “-”. One ignores the “.com” for the purposes of determining similarity since it or another such suffix is necessary for the effectiveness of the domain name. The only issue is whether the addition of “- indo” to a quite distinctive trademark name prevents the domain name from being confusingly similar to that trademark.
The Panel decided the same point in Koninklijke Philips Electronics N.V. v. Keith Lang,WIPO Case No. D2000-1736 with respect to “The Domain Name in dispute is a combination of the trademark “Philips” and a geographic term ‘Indo’ being an abbreviation of “Indonesia”. It is confusingly similar to the trademark “Philips”.” In this case, there are two further factors. First, the Complainant’s trademark is a made-up name and secondly that it occupies the main part of the domain name. For all these reasons, the Panel concludes that the domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests The Respondent is apparently not called “Atlascopco” or anything similar and does not appear to trade under that or any related name. There is no evidence that the Complainant or any member of the Complainant’s group has authorized the Respondent to use its trademark. The Respondent has not here asserted any rights or legitimate interests in that name. For these reasons, on the basis of the available evidence, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name consists of a trademark and the geographically descriptive term, “indo”. The trademark name is the combination of a common word “atlas” with a made-up name. “Atlascopco” has no meaning independent of the Complainant’s trademark. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent selected the disputed domain name knowing of the Complainant’s mark or business. Its only reason for doing so would appear to be to divert Internet users seeking the Complainant’s website(s) to the Respondent’s site. These points were made in the Complaint and the Respondent failed to give an alternative explanation. For all these reasons, the Panel concludes that the domain name was registered in bad faith. The Respondent’s only use of the domain name has been to display the Complainant’s trademark. This demonstrates that the Respondent is aware of the Complainant’s trademark rights and consequently that the Respondent is knowingly infringing them. Intentional infringement of someone’s trademark is an act of and, therefore, use in bad faith, in the absence of any reasonable explanation. The panel in VEDA GmbH v. Nicholas SilverstoneWIPO Case No. D2002-1040 reached the same conclusion. It said: “It is clear that, even if he never used or ceased to use the domain name, Mr. Siverstone is at least in a position of “passive holding”. “Passive holding” has been recognised as sufficient in a number of cases … This Panel sees no reason to challenge this prevailing opinion. Respondent, by remaining in default, has not offered any counter-argument.” The specificity of the Complainant’s trademark and the consequent clear use of it by the Respondent to create the domain name for no apparent or justifiable reason constitutes bad faith in the registration of the domain name. The subsequent use of the domain name again for no apparent or justifiable reason except to infringe the Complainant’s trademark rights appears to constitute bad faith use. 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. Adam Samuel Dated: May 27, 2008
Sole Panelist
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