The Complainant is Cargotec Solutions LLC of Ottawa, Kansas, United States of America, represented by Berggren Oy Ab, Finland.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2011. On May 10, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On May 11, 2011, 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.
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 May 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2011.
The Center appointed Adam Taylor as the sole panelist in this matter on June 9, 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 supplies trucks and tractors for use in yards, ports and terminals.
The Complainant owner of the United States Trade Mark No. 1866901 for the word OTTAWA in international class 12, filed on May 24, 1993.
The disputed domain name was registered on September 8, 1997.
The Complainant sent a cease and desist letter to the Respondent by email on February 15, 2011. No response was received.
As of May 6, 2011, the disputed domain name resolved to a website with sponsored links to sites selling trucks and truck-related goods and services. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant and its predecessors have been using the trade mark OTTAWA for decades and are known for the trade mark in question.
The disputed domain name comprises the Complainant’s trade mark together with the descriptive term “truck”. The word “truck” solely describes the nature of the goods for which the Complainant is known and this makes the disputed domain name even more confusingly similar to the Complainant’s trade mark.
The disputed domain name is identical and confusingly similar to the trade marks in which the Complainant has rights. Rights or Legitimate Interests
There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent is not commonly known by the disputed domain name and, according to the Complainant’s knowledge does not own any trade mark, company name or any other relevant rights to the name which corresponds to the disputed domain name.
The Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark at issue. On the contrary, the Respondent is using the disputed domain name for a website, which incorporates links to products and services offered by, inter alia, the Complainant’s competitors.
The Respondent is most likely gaining unjustified monetary benefit from the use of the disputed domain name by means of pay-per-click links on the Respondent’s website.
Visitors are being attracted to the website by means of the dispute domain name which incorporates the Complainant’s known and well established trade mark with the descriptive term “truck”. It is very likely that the public searching for information about the Complainant and its goods will search for the trade mark together with a descriptive term, such as “truck”. This kind of search will lead users to the Respondent’s website. The Respondent is thereby making commercial gain by use of the disputed domain name, which is confusingly similar to the Complainant’s trade mark.
Accordingly, the Respondent has no rights or legitimate interests in respect of the disputed domain name. Registered and Used in Bad Faith
The disputed domain name resolves to a website which contains pay-per-click links, inter alia, to competitor websites selling trucks and truck-related goods and services including via a link named “Ottawa trucks”. The Respondent’s website is therefore harmful to the Complainant and its business as well as being likely to tarnish its trade mark OTTAWA, which is known to the public to represent high quality goods and services.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website with the intent of causing confusion as to the source, sponsorship, affiliation, and endorsement of the Respondent’s website.
Should the Respondent try to claim that it is not responsible for the links on its website, it is nonetheless liable as the links have been placed purely to enable the Respondent to make commercial gain. Even if the current use of the domain name by the Respondent is considered “passive holding”, registration and use in bad faith is nonetheless established under the doctrine established in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has rights in the mark OTTAWA arising from its registered trade mark.
The disputed domain name consists of the Complainant’s trade mark combined with the descriptive term “truck”. That term is insufficient to differentiate the disputed domain name from the trade mark; on the contrary it enhances the connection given that the Complainant operates in the truck business.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Complainant claims that it has used the mark OTTAWA for “decades” but it provides no further detail, let alone supporting evidence. For that reason, the Panel cannot take into account any reputation of the Complainant when considering the likelihood that the Respondent registered the disputed domain name with the Complainant in mind.
The Panel is also aware of the possibility that the Respondent selected the disputed domain name for a generic purpose with reference to the Canadian city of Ottawa, rather than to target the Complainant.
However, for the following reasons, the Panel considers it more likely than not that the Respondent did indeed register the disputed domain name in contemplation of the Complainant.
First, there is no evidence before the Panel (whether on the Respondent’s website or otherwise) showing any connection between the Respondent and the city of Ottawa.
Second, the Complainant’s registered trade mark pre-dates registration of the disputed domain name by some four years. (The Panel assumes that the Respondent was the first registrant of the disputed domain name as there is no evidence before the Panel to suggest that the Respondent acquired the disputed domain name at a later date)
Third, the Respondent has not responded to the Complainant’s cease and desist communication, or to this proceeding, to deny the Complainant’s assertions.
The Panel concludes from the foregoing - and from the Respondent’s use of the disputed domain name for sponsored links to sites competing with the Complainant - that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy. 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.
Adam Taylor
Sole Panelist
Dated: June 17, 2011
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