The Complainant is Akzo Nobel N.V. of Arnhem, Netherlands, represented by Valea AB, Sweden.
The Respondent is Domain Admin, 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 November 17, 2011. On November 17, 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 November 18, 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 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 November 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 12, 2011.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on December 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 is Akzo Nobel N.V., a Dutch corporation seated in Arnhem, Netherlands, which is construed under the laws of Netherlands.
Complainant’s corporate name resulted from a merger between Dutch company Akzo and Swedish company Nobel Industries in 1994.
The Complainant’s worldwide activities are mainly focused in producing specialty chemicals. In particular, the Complainant is active in the field of global paints and coatings. It conducts its operations in more than 80 countries and has 55,000 employees worldwide.
The Complainant owns numerous national trademarks whose verbal elements consist of the combination of the words “akzo” and “nobel”. In addition to these, the Complainant owns the following international trademarks:
- International combined trademark AKZO NOBEL (logo) n° 622065 that was registered on June 28, 1994, in Nice classes 1, 2, 3, 5, 7, 9, 10 16, 17, 19, 22, 23, 24, 30, 35, 36, 37, 41 and 42;
- International word trademark AKZO NOBEL n° 822019 that was registered on March 8, 2004, in Nice classes 1, 2 and 5.
Respondent registered the disputed domain name on May 23, 1996. 5. Parties’ Contentions A. Complainant
First, the Complainant contends that it is the holder of numerous trademarks that were registered prior to the Respondent’s registration of the disputed domain name. It further asserts that the disputed domain name is identical to the Complainant’s trademarks.
Secondly, the Complainant claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent is not affiliated or related to the Complainant, has never been authorized nor licensed to use the Complainant’s trademark in connection with a website or for any other purpose. The Complainant further adds that the Respondent uses the disputed domain name to offer pay-per-click links, which cannot give rise to rights or legitimate interests.
Finally, the Complainant highlights the Respondent’s bad faith. The Respondent has been subject to many previous UDRP decisions and was found to be a “serial cybersquatter”. The Complainant asserts that AKZO NOBEL was already well known worldwide at the time of registration of the disputed domain name. As a result, the Respondent has registered and uses the domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] 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”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed 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) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of several trademarks consisting of the distinctive elements AKZO and NOBEL.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
Such happens to be the case here. The disputed domain name incorporates the AKZO NOBEL trademark in its entirety.
As many panels have ruled before, the addition of a hyphen between two words does obviously not make a sufficient difference between the domain name and the Complainant’s trademark to exclude the likelihood of confusion resulting from such incorporation (see, e.g., Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903; Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case the Complainant is the owner of numerous AKZO NOBEL trademarks. The Complainant has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers the paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the Respondent to be aware of Complainant’s trademarks. In the present case, the Complainant is the owner of numerous AKZO NOBEL trademarks. Moreover, the corporation Akzo Nobel is one of the worldwide leaders in the chemicals industry.
Considering the worldwide reputation of AKZO NOBEL in the abovementioned industry, the Panel finds it hard to believe that the Respondent would have chosen and registered the disputed domain name
in good faith, without having been aware of the AKZO NOBEL trademarks. The Respondent having neglected to proceed, did not bring any convincing evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.
Respondent’s good faith is all the more doubtful that a search of UDRP decisions reveals no less than 19 decisions rendered against the Respondent covering a broad range of domain names consisting of third parties’ trademarks, which clearly suggest that the Respondent has made a pattern of conduct of registering domain names consisting of third parties’ trademarks.
The Panel far more believes that the disputed domain name has been registered and is being used to attract Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that Respondent’s website is linked to the Complainant.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Philippe Gilliéron
Sole Panelist
Dated: December 26, 2011
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