WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Dürr Ecoclean, Inc. v. Private Registrations Aktien Gesellschaft Case No. D2010-0934 1. The Parties
The Complainant is Dürr Ecoclean, Inc. of United States of America, represented by Howard and Howard Attorneys, PLLC of United States of America.
The Respondent is Private Registrations Aktien Gesellschaft of Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed 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 June 8, 2010. On June 9, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On June 9, 2010, Network Solutions, 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” 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 June 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2010.
The Center appointed Ian Blackshaw as the sole panelist in this matter on July 15, 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 a United States Corporation which provides cleaning and filtration systems for the automotive and other industries under the Henry Filters brand of products, and in this connection is the owner of the corresponding registered trademark HENRY as mentioned below. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions: i. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant is the owner of United States Trademark No. 0897779, registered on September 1, 1970, a scanned copy of which has been provided to the Panel.
The Complainant's HENRY trademark has been registered as a trademark in the United States for 40 years by the Complainant with respect to its filter products (thus, the heightened relevance of the inclusion o the term “filters” in the domain name) and has been in use by the Complainant since 1954 and has become a famous and distinct mark.
The disputed domain name was registered, and a corresponding website owned and operated, by the Complainant since at least 2007. The disputed domain name was inadvertently allowed to expire/lapse, and the Respondent, presumably through the use of automated tools, registered the domain name shortly thereafter.
E-mail communications with the Respondent have gone unanswered. ii. The Respondent has no rights or legitimate interests in respect of the Domain Name
Before any notice to the Respondent of the dispute, there was no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Respondent has not been commonly known by the disputed domain name.
The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and, is instead, with apparent intent of commercial gain, misleadingly using the domain name to divert consumers to alternate filter sites or to tarnish the trademark or service mark at issue.
As best the Complainant can discern, the Respondent is a nothing more than a domain name “squatter”, which bulk-registers expired or otherwise lapsed domain names in an attempt to monetize such domains by reselling them to the corresponding trademark owners and/or third parties. iii. The Domain Name was registered and is being used in bad faith
As best the Complainant can discern, the Respondent is nothing more than a domain name “squatter”, which bulk-registers expired or otherwise lapsed domain names in an attempt to monetize such domain names by reselling them to the corresponding trademark owners and/or third parties. It thus appears that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, ad-linking, or otherwise transferring the domain name registration to a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name; and/or, the domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain name; and/or, by using the disputed domain name, the Respondent is intentionally attempting to attract for commercial gain, Internet users to the Respondent's website, linked ads 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 the Respondent's website or location or of a product or service on the Respondent's website or location or those sites or locations being ad-linked by the same.
A copy of the current disputed domain name web page, which reflects the Respondent's offer to sell the domain name, has been provided to the Panel. Moreover, following any of the links on this web page provides additional links to numerous of the Complainant's competitors and their products.
E-mail communications with the Respondent have gone unanswered. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant's contentions or take any part in them. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panels' decisions were based upon the complainants' assertions and evidence, as well as inferences drawn from the respondents' failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant's favor solely based on the respondent's default. See Cortefiel S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. The panel must decide whether the complainant has introduced elements of proof, which allow the panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant's registered trademark, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant's long and well-established trademark HENRY. The addition of the word “filters” is purely descriptive and, it may be added, is misleading in view of the nature of the Complainant's business; and, furthermore, the addition of this descriptor does not serve to distinguish, for Policy purposes, the disputed domain name from the Complainant's registered trademark HENRY. See Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 in which the Panel held that:
“Although the Domain Name consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the Domain Name. See also Harrods Limited v. Vineet Singh,WIPO Case No. D2001-1162, where the Panel held that “… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services”. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the Panel held that “The Domain Name consists of the word HARRODS plus a hyphen and the generic term “poker”. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”. Again, in Harrods Limited v. Peter Pierre,WIPO Case No. D2001-0456, it was stated that, consistent with previous decisions “….common nouns are rarely distinguishing elements. Where…. the common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable”. See further on this point, the cases of United States Olympic Committee v. MIC,WIPO Case No. D2000-0189; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a, For Sale,WIPO Case No. D2000-0662; and Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219”.
Likewise, the addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the domain name so as to avoid confusing similarity. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant's trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has long and well-established rights and extensive commercial use of the same for many years. The first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
– whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent's 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;
– whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
– whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant's long and well-established trademark HENRY. Indeed, in the view of the Panel, the adoption by the Respondent of a domain name identical or confusingly similar to the Complainant's trademark HENRY to display website content relating to the same area of goods and services inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below), and the consequential tarnishing of the Complainant's trademark HENRY and also the goodwill that the Complainant has established in this trademark through its extensive commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 [the Respondent's] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain name, is trading on the Complainant's valuable goodwill established in its long and well-established trademark HENRY.
Again, by registering and using the disputed domain name incorporating the Complainant's registered trademark HENRY, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent's activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the long and well-established trademark HENRY of the Complainant, held and used in commerce by the Complainant for many years prior to the date the Respondent became the registrant of the disputed domain name, the Respondent must have known and been aware of the Complainant's well-established rights in this mark at the time the Respondent registered the disputed name, which includes the Complainant's mark, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. In this Panel's view a domain name which contains the entirety of a third-party's registered trademark would typically be used in good faith only by the owner of the respective right, by licensees, or a similar class of rights-holder, which does not appear to be the situation in the present case.
As regards bad faith use of the disputed domain name, the links to competing products of the Complainant on the resolving website is also an indication of bad faith, as the Respondent is unfairly gaining a benefit at the expense of the Complainant through the presumed ‘click-through' income generated as a result of these links. See Intel Corporation v. the Pentium Group,WIPO Case No. D2009-0273. See also Compart AG v. C/Vertical Axis, Inc.,WIPO Case No. D2009-0462, in which case the panel held that: “The Respondent is deriving a financial benefit from web traffic diverted through the Domain Name to linked websites on the domain parking page. The Panel therefore also accepts that the Respondent has intentionally attracted Internet users to its websites or other on-line locations for commercial gains through confusion as to the source, affiliation or endorsement of the website or location. This amounts to evidence of bad faith use under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Domain Name was registered in bad faith and is being used in bad faith.” Furthermore, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493 in which it was stated that “…consumers expect to find a company on the Internet at a domain name address comprised of the company's name or trademark.” As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, is a further indication that the disputed domain name was registered and is being used in bad faith.
Furthermore, the particular circumstances, as mentioned in 5.i. above, in which the Respondent came to register the disputed domain name, are, in the view of the Panel, a further indication of bad faith on the part of the Respondent. See ChemRite CoPac, Inc. v. Issac Goldstein,WIPO Case No. D2010-0279. Likewise, the fact that the Respondent is offering to sell the disputed domain name, as evidenced on the disputed domain name website by the words: “Are you interested in buying this domain name?” is also an indication of bad faith on the part of the Respondent.
Also, even though not conclusive, the failure of the Respondent to reply to the Complainant's e-mails, as mentioned above, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings is, again in the view of the Panel, a further indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name 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 transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: July 16, 2010
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