The Complainant is Assa Abloy AB of Stockholm, Sweden, represented by Cohausz & Florack, Germany.
The Respondent is Fundacion Private Whois of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2013. On May 17, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2013, the Registrar 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 May 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 1, 2013. 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 owner of United States trademark registration No. 1,727,117 for PROXCARD filed on July 13, 1990 and registered on October 27, 1992, successively renewed, to cover “encoded cards activated by radio signals used for automatic card or card bearer identification, time and attendance applications, and controlled access functions” (Annexes 4.1 and 4.2 to the Complaint).
The disputed domain name was registered on June 17, 2011. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the disputed domain name reproduces its registered trademark PROXCARD (Annexes 4.1 and 4.2 to the Complaint) merely adding the suffix “pro” to it. Such element, in the Complainant’s view has a low degree of distinctiveness given that it usually stands for “advantage” or “professional” and thus solely highlights the Complainant’s trademark it is combined with.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent has not used, is not using and has not shown any intention of using the disputed domain name in connection with a good faith offering of goods and services;
(ii) the Respondent does not own any right in any trademark, service mark or any other sign such as a corporate name corresponding to “Proxcard”;
(iii) the Complainant has not licensed or otherwise permitted the Respondent to use the PROXCARD trademark and
(iv) the Respondent is not commonly known by the disputed domain name.
Furthermore, the Complainant asserts that the website relating to the disputed domain name is being used for the sale of goods which are identical and highly similar to the Complainant’s products, indeed offering “ProxCard Cloning” and “HID Compatible” cards for sale on the Respondent´s website (Annex 6 to the Complaint).
Such use by the Respondent characterizes, in the Complainant’s view, a deliberate effort to confuse Internet users thus taking advantage from the Complainant’s trademark and reputation. The Respondent’s use of the disputed domain name should therefore be considered illegitimate and unfair, with the intent for commercial gain by misleadingly diverting consumers or tarnishing the Complainant’s trademark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the PROXCARD trademark, duly registered (trademark registration No. 1,727,117) in the United States of America on October 27, 1992 and successively renewed, to cover “encoded cards activated by radio signals used for automatic card or card bearer identification, time and attendance applications, and controlled access functions (Annexes 4.1 and 4.2 to the Complaint).
In this Panel’s view the suffix “pro” in the disputed domain name is not sufficient to distinguish the disputed domain name from the Complainant’s mark given that such element is commonly used to highlight a quality of the preceding word and thus can create confusion or undue association in Internet users between the disputed domain name and the Complainant’s trademark.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, 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; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see e.g. Banco Bradesco S/A v. B Private Registrant, A Happy DreamHost Customer,WIPO Case No. D2010-2108, ). Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the PROXCARD trademark in the disputed domain name.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the Panel’s finding of the absence of rights or legitimate interests.
According to the print-outs of the website at the disputed domain name (Annex 6 to the Complaint) the disputed domain name is being used for the sale of goods which are identical and highly similar to the Complainant’s products, including the highlighted offer of “ProxCard Cloning” and “HID Compatible” cards for sale. Furthermore, the website does not disclose the Respondent’s relationship or lack thereof with the Complainant. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with the sale of goods which are identical and highly similar to the Complainant’s products, can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s mark.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the Respondent appears to use some sort of “Privacy Protection” service, which may further support in the circumstances of this case the Panel’s finding of bad faith.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) 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
Wilson Pinheiro Jabur
Sole Panelist
Date: July 11, 2013
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