WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Atlas Copco Aktiebolag v. AtlasCaspian, ParsaGostar Co Case No. D2008-1783 1. The Parties
The Complainant is Atlas Copco Aktiebolag of Stockholm, Sweden, represented internally.
The Respondents are AtlasCaspian of Tehran, Islamic Republic of Iran and ParsaGostar Co of Qazvin, Islamic Republic of Iran, (“The Respondent”). 2. The Domain Names and Registrars
The disputed domain names , and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR.
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 November 18, 2008. On November 20, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR and to OnlineNic, Inc. d/b/a China-C requests for registrar verification in connection with the disputed domain names. On November 22, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 21, 2008, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent email communications to the Complainant on November 27, 2008 and December 10, 2008, providing the registrant with the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 12, 2008.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 6, 2009.
The Center appointed John Swinson as the sole panelist in this matter on January 23, 2009. 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 registered owner of numerous trademark registrations for the mark ATLAS. For example, the Complainant is the registered owner of the trademark ATLAS in Pakistan (trademark number 10227) which was registered on March 21, 1950, in Sweden (trademark number 75349) registered on January 22, 1954 and in India (registered trademark number 142960) registered on March 25, 1950.
The Complainant also has trademark registrations for the mark ATLAS COPCO. For example the complainant is the registered owner of a United States trademark for ATLAS COPCO (trademark number 1526505) which was registered February 28, 1989 and a Swedish trademark for ATLAS COPCO (trademark number 148653) which was registered September 13, 1974.
The Complainant is primarily involved in developing, manufacturing, marketing and servicing mechanical equipment such as compressors, mining equipment and industrial power tools. 5. Parties' Contentions A. Complainant
The Complainant contends that:
The disputed domain names are identical or confusingly similar to the Complainant's ATLAS trade marks.
The disputed domain names incorporate the Complainant's ATLAS trademark in its entirety, with the only addition being the geographic term “Caspian”, which does not distinguish the disputed domain names from the Complainant's ATLAS trademarks.
The disputed domain names are or have been associated with copy-cat websites containing an infringing “Atlas Caspian” logo that is confusingly similar to the Complainant's ATLAS COPCO trademarks and logo.
The Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services and therefore cannot claim any legitimate interest in the disputed domain names.
The disputed domain names have been and are used in connection with a scheme involving the infringer passing itself off as being Atlas Copco or as being a division or affiliate within Atlas Copco.
There is no evidence that the Respondent has been commonly known by the disputed domain names.
The disputed domain name was registered and is being used in bad faith.
The Respondent has deliberately sought to exploit the goodwill associated with the Complainant and the Complainant's ATLAS trademarks by making the disputed domain names and associated websites appear to be affiliated with, sponsored by, authorized by, or operated by Complainant.
Bad faith in this case is also established by the fact the disputed domain names have been used in connection with a “phishing” scheme. The websites for several of the disputed domain names contain (or contained) links to a “phishing” site that was located at the copy-cat site “”. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To succeed, the complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the complainant. A. Identical or Confusingly Similar
To prove this element, the Complainant must have rights in a trademark or service mark, and the disputed domain name must be identical or confusingly similar to the Complainant's trademark or service mark.
The Panel is satisfied that the Complainant has registered trademark rights in the mark ATLAS. Examples of the Complainant's ATLAS registered trademarks are provided above in paragraph 4.
The Respondent has used the Complainant's ATLAS trademark in its entirety and has merely added the geographic term “Caspian”. Where a respondent has used another person's trademark and has merely inserted a geographic name, the domain name can be considered identical or confusingly similar to the complainant's trademark (see Natura Cosméticos S/A and Indústria e Comércio de Cosméticos Natura Ltda. v. N/A,WIPO Case No. D2008-1128; InfoS, Inc. v. Hari Prakash,WIPO Case No. D2000-0076; and Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363).
The Panel therefore finds that, in the circumstances of this case, the disputed domain names are identical or confusingly similar to the Complainant's ATLAS trademarks. Consequently, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Complainant has submitted that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services and that some of the disputed domain names are being used in connection with a phishing scheme. The Complainant also submitted that the Respondent is not commonly known by the disputed domain name.
The Respondent failed to respond to these allegations. The Panel is satisfied that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent, by failing to provide a response, has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Respondent registered the disputed domain names decades after the some of the Complainant's ATLAS trademarks were registered.
The Panel has viewed the websites at the disputed domain names and other websites linked from these websites.
The Panel is satisfied that the Respondent registered, and continues to use, the disputed domain names to take advantage of the Complainant's goodwill and reputation. For example the website located at the disputed domain name is clearly an attempt to create the assumption that the Respondent is affiliated with the Complainant.
The Panel considers that the Complainant has demonstrated bad faith as set out in paragraph 4(b)(iv) of the Policy.
The Panel finds that the Respondent has registered and used the disputed domain names in bad faith. Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied. 7. Other Proceedings
The Panel notes that a United States District Court has decided a dispute between the two Parties concerning numerous other domain names registered by the Respondent that contained the word “atlas”.
The Panel did not rely on the District Court's judgment when coming to the decision in the present dispute. However, the Panel's reasoning and decision as set out above is consistent with the decision of the United States District Court in Atlas Copco AB, et al. v. ATLASCOPCOIRAN.COM, et al., 533 F. Supp.2d 610 (E.D. Va. 2008). 8. 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 names, , , and be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: February 6, 2009
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