The Complainant is Intellectual Property Holdings AS of Oslo, Norway, represented by Onsagers AS, Norway.
The Respondent is Sunny Nathan of London, United Kingdom of Great Britain and Northern Ireland. 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 June 13, 2012. On June 13, 2012, 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 June 18, 2012, 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 June 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 10, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 11, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on July 17, 2012. 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 the manufacturer of a wide range of goods, including building and engineering materials, which has been doing business under the AKER name since at least as early as 2005. The Complainant provided evidence of several trademark registrations for the AKER mark dating from 2005, and has secured registration for the mark in numerous jurisdictions worldwide. The Complainant is a subsidiary of Aker ASA, a Norwegian limited company.
The disputed domain name was registered on February 15, 2012, and currently does not link to any active content. According to the evidence provided in the Complaint, the disputed domain name was previously used to display content taken from a third-party website at , which advertised competing goods and services to those offered by the Complainant. The text previously shown on the site replaced the company Aibel SA’s name with the name of “Aker AS”. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regards to the first element of the Policy, the Complainant states that the disputed domain name is confusingly similar to its AKER mark because the disputed domain name contains its registered mark in its entirety in addition to the dictionary term “services”.
The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain name as it has not been licensed to use the Complainant’s mark in any way. The site has been used to advertise an apparent business active in the same industry as the Complainant, selling similar goods. The Complainant alleges that the Respondent copied and pasted the text and graphics from a third party’s website (the company Aibel SA, also a competitor of the Complainant) simply changing the corporate name within the text to “Aker AS”. The Complainant contends that such use of the disputed domain name is not a bona fide offering of goods or services, nor a noncommercial or fair use of the disputed domain name. Further, the Complainant alleges that the Respondent is not known by a name corresponding to the disputed domain name.
Concerning the third requirement of the Policy, the Complainant alleges that the Respondent has both registered and is using the disputed domain name in bad faith. The Complainant contends that the Respondent registered the disputed domain name with the intent to mislead consumers for commercial gain pursuant to paragraph 4(b)(iv) of the Policy, and additionally to disrupt the Complainant’s business pursuant to paragraph 4(b)(iii) of the Policy. The Respondent likewise did not reply to a cease-and-desist letter sent by the Complainant on March 20, 2012. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
In order to succeed under the first element of the Policy, the Complainant must demonstrate both its rights in the relevant trademark, and that the disputed domain name is identical or confusingly similar to the said trademark.
By virtue of its numerous trademark registrations for AKER and related marks, the Complainant has demonstrated its rights for the purposes of the Policy.
The test for identity or confusing similarity is confined to a comparison of the textual string of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors generally considered in trademark infringement. See Europages v. Match Domains LLC, Domain Admin,WIPO Case No. D2011-1161 and Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development,WIPO Case No. D2006-0020. It has furthermore been well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The textual string of the disputed domain name is thus “akerservices”, which contains the entirety of the Complainant’s AKER mark in conjunction with the dictionary word “services”. Thus, the Complainant’s registered mark is fully included within the string of the disputed domain name, in connection with a generic word descriptive of the Complainant’s activities. The addition of a dictionary word or term which is descriptive of a complainant’s goods or services will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s AKER mark, and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack rights or legitimate interests in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant confirms that it has not licensed or authorized the Respondent to use its AKER mark in any manner. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by the disputed domain name or a name corresponding to the disputed domain name. Additionally, the website has previously been used to display information purporting to relate to the AKER brand through the use of third-party website content. The Complainant has provided evidence of a cease-and-desist letter sent from the third-party company Aibel SA to the Respondent concerning the Respondent’s unauthorized use of the text and graphics from the webpage. The Respondent replaced all references to “Aibel SA” in the copied text with references to “Aker AS”, thus giving the impression that the Complainant operated the disputed domain name.
The Complainant contends that the Respondent is using the disputed domain name to trade off the goodwill associated with the AKER marks for its own financial gain, perhaps by promoting its own competing goods. Links on the website include a “Contact Us” section, which provides an email address using the “@” extension, and advertisements for both summer job and career opportunities. The Respondent’s page did not contain any disclaimers or notices to indicate to Internet users that the Respondent was not, in fact, the Complainant. Thus, from the record available to the Panel, it seems evident that the Respondent was attempting to lure Internet users to its site in order to realize some form of commercial gain, and that such activity did not constitute noncommercial or fair use of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant has provided evidence of its AKER trademark, which has been registered since at least 2005 for numerous classes of goods and services. The disputed domain name was registered on February 15, 2012, roughly seven years after the Complainant’s provided trademark certificates were in effect. The Respondent has used the disputed domain name, which contains the entirety of the Complainant’s AKER mark, to advertise competing goods and services to those of the Complainant, and may have attempted to impersonate the Complainant’s business. Thus, it is clear to the Panel that the Respondent was fully aware of the Complainant and its marks when it selected the disputed domain name.
By registering the disputed domain name and using it to display content advertising similar goods and services to those of the Complainant, the Respondent was clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s site. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Calzedonia S.p.A v. N/A Svetlana Petrova / Whois Privacy Services provided by Domainprotect,WIPO Case No. D2012-0522. Similarly, as the Respondent appears to be operating in the same field of industry as the Complainant, and has used the disputed domain name to confuse Internet users (or to impersonate the Complainant), the Panel finds that the Respondent’s actions constitute bad faith pursuant to paragraph 4(b)(iii) of the Policy.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also been met. 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.
Torsten Bettinger
Sole Panelist
Dated: July 27, 2012
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