WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sapa Holding AB and Sapa Extrusions Inc. v. Sapa Information Management Case No. D2009-1785 1. The Parties
Complainants are Sapa Holding AB of Stockholm, Sweden and Sapa Extrusions Inc. of Coraopolis, United States of America, represented by Buchanan Ingersoll & Rooney, PC, United States.
Respondent is Sapa Information Management of Minneapolis, United States. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2009. On December 28, 2009,the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the Domain Name. On that same day, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that 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” 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 January 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 29, 2010.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 8, 2010. 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
Since 1963, Sapa AB, and its predecessor, subsidiary and affiliated companies, including Complainants, have developed, manufactured and marketed value added profiles, profile-based building systems and heat-exchanger strips in the light weight material aluminum industry. Sapa Holding AB has obtained United States Trademark Registration No. 3,580,713 for SAPA and United States (U.S.) Trademark Registration No. 3,580,738 for SAPA: & DESIGN. In addition to those registrations, Complainants have obtained or filed for trademark registrations in other countries.
Respondent registered the Domain Name on March 6, 1996. 5. Parties' Contentions A. Complainants
Complainants allege common law rights in the SAPA Mark by virtue of their longstanding use of the Mark as well as use by their predecessor, subsidiary and affiliated companies. They also assert rights in the SAPA Mark by virtue of trademark registrations (e.g., U.S. Registration Nos. 3, 580,713 and 3,580,738).
Respondent has not made any legitimate use of the Domain Name since its registration on or about March 6, 1996 other than to deceive visitors to that website (which it still states is “under construction”) into believing that the site is operated by or affiliated with Complainants and to unlawfully misappropriate the goodwill in the SAPA trademark. Respondent's failure to create a website that has actual content, as opposed to merely redirecting confused website visitors to other aluminum extrusion companies who are participating with Respondent in this deceptive activity, demonstrates that it has no legitimate rights or interests with respect to the Domain Name.
Since the time Respondent registered the Domain Name, it has not made any legitimate use of it. Respondent's website is merely a “clearinghouse” for aluminum extrusion companies seeking to lure website visitors because of Complainants'well-known brand name in the extrusion industry. It is a classic “bait and switch” tactic designed to mislead visitors to the site as to the site's affiliation with sponsorship by, or connection to the Complainants.
On October 21, 2009, Complainants, through their counsel attempted to notify Respondent by letter, through its administrative contact, that its continued use of the Domain Name violated their trade mark rights and demanded Respondent assign its rights in the Domain Name to Complainants. Respondent refused to accept delivery of the letter by United Parcel Service on three different occasions – October 22, 2009, October 23, 2009 and October 26, 2009. In each case, UPS noted that “receiver was unavailable to sign” the letter. Complainants sent a nearly identical letter to Respondent on October 27, 2009 via United States Postal Service Certified Mail with a Return Receipt Requested. Respondent's failure to reply to Complainants' demands set forth in those letters has led to the filing of this Complaint seeking an order transferring the Domain Name. In this case, Respondent's failure to accept delivery of these demand letters, its continued infringement of the SAPA Mark, and its blatant attempt to mislead visitors to the website as to some connection between that site and Complainants is a clear indication that Respondent is acting in bad faith B. Respondent
Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) 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
(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.
Thus, even though Respondent in this case failed to file a Response, Complaints had the burden of proof on these elements to be entitled to transfer of the Domain Name to them. A. Identical or Confusingly Similar
Complainants rely on both common law rights in the SAPA Mark and U.S. Registrations No. 3,580,713 for “SAPA” and U.S. Registration No. 3,580,738 for “SAPA&Design.”
Although Complainants have not made of record the United States trademark registration documents to support their assertion of rights in the SAPA Mark, the registrations would be sufficient to show Complainants rights in the SAPA Mark. Because Complainants also have alleged here common law rights to the SAPA Mark and because Complainants' use is relevant to whether Respondent registered the Domain Name in bad faith, the Panel will address Complainants' allegation of common law rights here.
Complainants have failed to put forth any evidence in this proceeding by which the Panel could determine the existence of Complainants' common law rights in the SAPA Mark, for example, where they have been using the Mark (namely, in the United States), how they have been using the Mark, and how long they have been using the Mark. Complainants have only alleged in a conclusory manner that “by virtue of their longstanding use of the SAPA mark,” they have common law rights, and that “[t]he SAPA trademark has become a distinctive identifier associated with the Complainant.” Relevant evidence of such distinctiveness may include such things as length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Complainants, however, have not adduced any such evidence here. Lastly, Complainants allege that they and their “affiliated entities have sold aluminum products since at least as early as 1997, as shown by European Community Trademark No. 463,364.” Once again, Complainants have not made of record this registration nor have they provided any evidence to support that statement or to show that Complainants have used the Mark in conjunction with the aluminum products its affiliated entities have been allegedly selling since 1997.
Lastly, Complainants have failed to allege, let alone argue, that the Domain Name is identical or confusingly similar to the SAPA Mark. Regardless of how apparent this may seem to a complainant, the Policy does not exempt proof of this element for this reason. B. Rights or Legitimate Interests
The Panel has not addressed this issue in view of the Panel's determination on the other elements. C. Registered and Used in Bad Faith
The requirements of paragraph 4(a) of the Policy are conjunctive, and Complainants bear the burden of proof on each. Telestra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. If any required element is not established the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the Domain Name because Complainant failed to prove bad faith registration).
At least one other Panel has noted that “[t]he longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration.” AVN Media Network, Inc. v. Hossam Shaltout,WIPO Case No. D2007-1011 (holding that the Complaint must fail because Complainant failed to prove bad faith registration “mainly because of the length of time [9 years] since the original domain name registration”). Here, Respondent registered the Domain Name back in 1996, but the one letter Complainants made of record (they allege sending multiple letters to Respondent in 2009) aimed at persuading Respondent to transfer the Domain Name to them was dated at the end of 2009. That is 13 years after Respondent registered the Domain Name. But the Panel's decision in this case that Complainants have failed to establish bad faith registration does not rest simply on the passage of time between registration of the Domain Name and Complainants' assertion of its rights.
Complainants have neither asserted nor provided the Panel with any facts or circumstances sufficient to show Respondent registered the Domain Name in bad faith.
It is undisputed Respondent registered the Domain Name back in March 1996. Although Complainants did not provide the Panel with evidence of its trademark registrations (U.S. Registrations Nos. 3,580,713 and 3,580,738) for the SAPA Mark, registration information the Panel found from the U.S. Patent and Trademark Office's Trademark Electronic Search System (“TESS”) indicates that the registrations did not issue until 2009. So, even if the doctrine of constructive notice were to be applied in these proceedings, the Panel cannot infer that Respondent knew of Complainants' registrations for the SAPA Mark and registered the Domain Name in bad faith because Complainants' trademark registrations for the SAPA Mark issued well after Respondent registered the Domain Name.
Furthermore, as discussed above, because Complainants failed to provide the Panel with any evidence to support its allegations of common law rights (e.g., time, place, extent, and manner of Complainants' use of the SAPA Mark), the Panel has no evidence to infer bad faith registration when Respondent registered the Domain Name. Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 (denying transfer of the Domain Name for lack of bad faith registration because, for example, there was no documentary evidence that someone from the Respondent actually visited, or is likely to have visited, the Complainant's website in the period before registration of the Domain Name, or that Complainant's promotional literature actually was, or is likely to have been, received by Respondent during that period); see also AVN Media Network, Inc. v. Hossam Shaltout,WIPO Case No. D2007-1011 (holding that bad faith registration cannot be found if the domain name had been registered before the Complainant acquired trademark rights); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions 3.1 and cases cited therein.
The Panel has not addressed Complainants' arguments regarding bad faith use of the Domain Name because of the omission of proof on bad faith registration. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Harrie R. Samaras
Sole Panelist
Dated: February 20, 2010
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