The Complainant is Representaciones De Materias Primas Industriales Ltda. of Santiago, Chile, represented by Alessandri & Compañía Abogados, Chile.
The Respondent is N of Anyang, Gyeonggi-Do, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2011. On January 7, 2011, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On January 10, 2011, F 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 January 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. On January 13, 2011, the Center received an email communication from the Respondent containing a list of financial offers related to the disputed domain name. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on February 3, 2011.
The Center appointed Knud Wallberg as the sole panelist in this matter on February 14, 2011. 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, Representaciones De Materias Primas Industriales Ltda. is a Chilean limited liability legal entity with base in Santiago de Chile. The Complainant was founded in 1975 and has been known as MAPRIN Ltda since that date, MAPRIN being an acronym, of the first letters of the main and relevant words of its commercial legal name.
According to the Complainant, it is a leading corporation in the Chilean market dedicated to the imports, exports and distribution of chemical ingredients, cosmetic products, chemical and cosmetic raw materials, and other raw materials for the pharmaceutical and veterinary markets and their relevant containers, packaging, machinery and also equipment for such products. In addition the Complainant has a wide connection with international markets mainly because of its large range of foreign clients and distributors.
The Complainant is owner of a Chilean trademark registration of the mark MAPRIN, for services in class 35 and class 39.
The Complainant was the former owner of the disputed domain name and due to an unfortunate error the domain name was not timely renewed. When the Complainant tried to renew the disputed domain name, it was not possible because by then the current domain name owner – the Respondent – had registered the domain name. 5. Parties’ Contentions A. Complainant
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is identical to the Complainant’s registered trademark MAPRIN with the addition of the gTLD denomination “.com”, which is not sufficient to distinguish the domain name from the trademark. It has been well established that the “.com” portion of a domain name must be ignored when assessing the identity or confusing similarity for the purpose of the Policy.
Consequently, the disputed domain name is identical to the Complainant’s MAPRIN trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use nor register its trademark or to seek the registration of any domain names incorporating said trademark. The Respondent is not commonly known as “Maprin”, has never operated a business under the trademark MAPRIN nor has any registration rights regarding the trademark MAPRIN.
Further, the Respondent makes no legitimate noncommercial or fair use of the disputed domain name as the disputed domain name directs to the Respondent’s webpage which simply recommends and offers links to other websites. In addition there is a mention on the website “buy this domain” and “The domain may be for sale by its owner”.
The disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered and is being used in bad faith for the following reasons:
The disputed domain name deliberately and misleadingly includes the Complainant’s trademark MAPRIN, which should only be used to identify the goods and services provided by the Complainant.
The Respondent is not, and has never been, a representative of the Complainant or been licensed to use the MAPRIN trademark.
Further, the Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services and in addition the domain name is offered for sale, which is a clear indication of bad faith under the UDRP.
The Complainant further argues that the Respondent, N, is a company dedicated primarily to the selling and renting of Internet domain names, and the Respondent has a history of registering domain names in bad faith.
Lastly, when the Complainant tried contacting the Respondent informing it of the Complainant’s trademark rights, the Complainant received no response. The only manner to contact the Respondent was via a webpage that offered to sell the disputed domain name. In the circumstances, on August 20, 2010, the Complainant offered USD 75 for the disputed domain name the counter offer was USD 2,500. The Complainant then offered USD 200 and the counter offer was USD 20,000. In a second attempt on December 10, 2010 the Complainant offered USD 1,000 USD and the counter offer was USD 3,330, all amounts being clearly superior to the out-of-pocket expenses for the registration of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the 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:
(1) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered or is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, 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 there from as it considers appropriate. A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s distinctive mark MAPRIN with the addition of the “.com” designation. Since the top level designation may be disregarded for the purpose of this proceeding, the Panel finds that the disputed domain name is identical to a mark in which the Complainant has rights.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled. B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent is using the disputed domain name, makes it inconceivable to the Panel does that any rights or legitimate interests may exist.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii), cf. paragraph 4(c) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration or use in bad faith:
i) circumstances indicating that the domain name 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 domain name 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 domain name holder has engaged in a pattern of such conduct; or
iii) the domain name 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 domain name holder has intentionally attempted to attract, for commercial gain, Internet users to the domain name 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 domain name holder’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
It is well established that the UDRP also applies to trade mark rights established through use, and given the prior registration of the disputed domain name by the Complainant and the fact that the Complainant has been known as “Maprin Ltda” since 1975 the Panel finds that the Complainant has established that MAPRIN has become a distinctive identifier associated with the Complainant or its goods and services prior to the registration date of the disputed domain name. The fact that the registration date of the disputed domain name predates both the filing date and the registration date of the Complainants trademark does not alter this finding. In the current circumstances and given the distinctive nature of the Complainant’s mark, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant or without the intention of targeting the Complainant.
On balance, the Panel therefore finds that the disputed domain name was registered in bad faith. The fact that the disputed domain name - due to an apparent mistake by the then holder (the Complainant) - was not renewed cannot in itself and does not under the specific circumstances of this case dispel the finding of bad faith registration by the Respondent.
The Respondent has been using the disputed domain name actively for what appears to be a standardized pay-per-click parking page. In addition to this content the webpage has contained a statement saying “Buy this domain. The domain may be for sale by its owner” and as explained by the Complainant in the Complaint the disputed domain name was actually offered for sale. This type of setup by the Respondent is a clear indication of bad faith use as previously stated in The Procter & Gamble Company v. N,WIPO Case No. D2010-0357 concerning the domain name .
The Panel further finds that the Respondent’s lack of bona fide use of the disputed domain name is likely to disrupt the business of the Complainant since it could, in this Panel’s view, give those Internet users that will look for information on the Complainant and its products on the Internet the impression that the Complainant is not present on the Internet. The Panel also notes that the disputed domain name incorporates a now registered and to some extent reputed trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 disputed domain name be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: February 23, 2011
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