WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Metalfrio Solutions A/S v. Cliff Upritchard Case No. D2010-0092 1. The Parties
The Complainant is Metalfrio Solutions A/S, of Aalestrup, Denmark, represented by Patrade A/S, Denmark.
The Respondent is Cliff Upritchard of Newtownards, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2010. On the same date, the Center addressed a communication to the Complainant indicating that the Complaint filed did not appear to make the assertions required under the UDRP, in particular in relation to the criteria of the Respondent's lack of legitimate interest in regards to the Domain Name and of the Respondent's bad faith at the time of the registration and in the use of the Domain Name. On January 20, 2010, the Complainant addressed a communication to the Center providing arguments in relation to the above-mentioned criteria. On January 20, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Name. On January 21, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 31, 2010 and February 1, 2010. The Center verified that the Complaint together with the amendments 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 February 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 23, 2010.
The Center appointed Luca Barbero as the sole panelist in this matter on March 2, 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
The Complainant is Metalfrio Solutions A/S, a company which operates in the refrigeration market and is one of the largest refrigeration companies in the world.
The Complainant has provided evidence of ownership of the Community Trademark Registration No. 2654754 for CARAVELL, registered on August 1, 2003, in class 11.
The Complainant is also the registrant of the domain name , registered on October 22, 1996, through which the Complainant operates promoting its activity.
The Respondent registered the Domain Name on February 25, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the trademark in which the Complainant has rights as it reproduces the trademark CARAVELL in its entirety. The Complainant points out that the suffix “Ireland” added to the mark CARAVELL is merely descriptive.
With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent has no rights or legitimate interest in the Domain Name, since it is redirected to the Respondent's own website at “”, in which the Respondent's activity, in the same field of the Complainant, is promoted.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, since the Complainant is one of the leaders in the market of refrigerators, the Respondent is unlawfully using the Complainant's trademark in order to attract the relevant part of the public to its own website. B. Respondent
The Respondent did not reply to the Complainant's contentions and is in default.
Therefore the Panel shall decide this proceeding on the basis of the Complainant's submissions, drawing such inferences from the Respondent's default that are considered appropriate according to paragraph 14(b) of the Rules. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Domain Name Identical or Confusingly Similar
The Complainant has provided evidence of ownership of the Community Trademark Registration No. 2654754 for CARAVELL, registered on August 1, 2003, in class 11.
The Panel finds that the Domain Name is confusingly similar to the trademark owned by the Complainant. Pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.
Therefore, the mere addition of the word “Ireland” does not exclude the likelihood of confusion between the Domain Name and the Complainant's trademark.
It is well established in prior decisions that the addition of descriptive terms to a trademark is not a distinguishing feature, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).
More in particular, the addition of the word “Ireland” is likely to increase the risk of confusion with the Complainant's trademark, since Ireland is the country in which the Respondent operates its competing activity in the refrigeration market.
In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent's rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedent, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection c/o Domain Admin, NAF Claim No. 852581).
In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainant's prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant's trademarks.
Furthermore, there is no indication before the Panel that the Respondent is commonly known by the Domain Name, has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name.
Indeed, the redirection of the Domain Name to the Respondent's website at “” in which the Respondent's activity in the same field of the Complainant is promoted, is clear evidence of the Respondent's intent, for commercial gain, to misleadingly divert consumers to its website.
Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the Domain Name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the holder's website or location or of a product or service on the holder's website or location.
As to bad faith at the time of the registration, the Panel notes that, in light of the registration of the trademark CARAVELL in 2003, in view of its intensive use in connection with the sale of the Complainant's refrigerators in Europe and worldwide, and considering that the Respondent operates in the same field of the Complainant, the Respondent was well aware of the Complainant's trademark when decided to register the Domain Name.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “It is obvious that the value and goodwill, of the Complainant's mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
With reference to bad faith in the use of the Domain Name, the Panel notes that, in light of the redirection of the Domain Name to the Respondent's website, which promotes the Respondent's competing activity in the refrigeration market, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website and its products and services, according to paragraph 4(b)(iv) of the Policy.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response in this case, as stated in Sports Holdings, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.
Along the same lines is the decision Renegade LLC v. Kenneth Gibert,WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent's website for commercial gain based on confusion with the Complainant's mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.
In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith. 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 cancelled.
Luca Barbero
Sole Panelist
Dated: March 15, 2010
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