The Complainant is Synthite Limited of Mold, Flintshire, United Kingdom of Great Britain and Northern Ireland (the “UK”), represented by Bond Dickinson LLP, UK.
The Respondent is Synthite Chemicals, of Manchester, UK. 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 August 28, 2013. On August 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 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 September 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 8, 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 a UK registered limited company, founded in 1920. The Complainant manufactures a broad range of chemicals for inter alia the cosmetic, pharmaceutical, textile, building and construction, water treatment and agricultural sectors. The Complainant has consistently used its unregistered trademark SYNTHITE in connection with such manufacture for over 90 years. The Complainant uses the domain name , which was created before August 1996, for its corporate website.
Little is known about the Respondent in this case other than the fact that the Complainant has no connection with the Respondent. The disputed domain name was created on February 16, 2013. The registrant organization disclosed on the WhoIs for the disputed domain name is “Synthite Limited”. The Complainant denies registering the disputed domain name and states that it has no interest in it and that the registrant details are therefore false.
In April, 2013, the disputed domain name began to be used in email correspondence by a person claiming to be a representative of a company named “Synthite Chemicals Ltd” of Manchester, UK. The said company does not exist and its alleged address is that of a firm of chartered accountants who have no knowledge of such company. The said correspondence was addressed to law firms and debt collection agencies outside the UK and solicited debt collection services for sums allegedly due to “Synthite Chemicals Ltd”. Both a “Proposal for Debt Collection Services” document included in the said correspondence and the website at the disputed domain name listed the address of “Synthite Chemicals Ltd” as that of the Complainant.
Evidence was provided by the Complainant of an investigation into “Synthite Chemicals Ltd” carried out by a UK based debt collection agency which had received the type of correspondence outlined above via a German partner agency. The UK agency noted on its website that it had called the telephone number for “Synthite Chemicals Ltd” and stated that the call appeared to be routed overseas. The person answering the call was evasive when asked for details regarding “Synthite Chemicals Ltd” and swiftly terminated the call. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to a trade mark in which it owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant provides a history of its use of the SYNTHITE unregistered trademark since 1920 by way of a print-out from the Complainant’s corporate website. The Complainant submits that there is either identity between the disputed domain name and the Complainant’s said unregistered trademark, or at the very least a confusing similarity because the disputed domain name consists principally of the Complainant's said unregistered mark together with the term “chem”, which the Complainant states is an abbreviation for the descriptive term “chemicals”, these being the principal products supplied by the Complainant.
The Complainant submits that the Respondent has not used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services and, on the contrary, it has chosen the disputed domain name as a vehicle for fraudulent activity and/or to unfairly obtain business from the Complainant.
The Complainant asserts that it is clear from the email correspondence issued by the entity purporting to be “Synthite Chemicals Ltd” that the Respondent is purporting to be, or to be associated with, the Complainant. The Complainant notes that the said correspondence uses the Complainant’s address in connection with an entity allegedly established in 1920, reflecting the Complainant’s corporate identity in both cases, and that the author claims to represent a leading chemical supplier in the UK. The Complainant makes reference to the investigations of the UK based debt collection agency noted above. The Complainant adds that it has reported the alleged fraudulent activity of those behind the Respondent to the police. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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
In the present case, the Complainant seeks to rely upon rights in an unregistered trademark consisting of the term SYNTHITE. In this connection, it is convenient to refer to paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”, which provides the following consensus view:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Panel respectfully adopts the consensus view. In the present case, the Panel is satisfied that the Complainant’s lengthy trading history under the corporate name “Synthite Limited” of more than 90 years’ standing together with its use in the course of trade of the domain name since before August 1996 demonstrate that the mark SYNTHITE has become a distinctive identifier associated with the Complainant. The disputed domain name incorporates the Complainant’s said unregistered mark in its entirety together with the addition of the word “chem”. The Panel accepts the Complainant’s contention that this is a commonly used abbreviation of the generic word “chemicals”.
Numerous previous decisions under the Policy have found that the use of descriptive or generic words, or abbreviations thereof, in addition to a trademark in a domain name do not prevent the domain name from creating a likelihood of confusion. One or more descriptive elements cannot remove the overall impression made on the public by the trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409). In addition, the Panel notes in the present case that the addition of the abbreviation “chem” to the Complainant’s SYNTHITE trademark strengthens the apparent link between the disputed domain name and the said trademark, given that the Complainant is in the chemical manufacturing business, which in the opinion of the Panel increases the likelihood of confusion.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which rights or legitimate interests may be demonstrated in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) You are 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.”
In the present case, the Complainant states that it did not register the disputed domain name and that its identity has been usurped by the Respondent in the provision of false details in the WhoIs for the disputed domain name and on the website associated with the disputed domain name. The Respondent has not replied to the Complainant’s contentions and the record in this case does not indicate to the Panel that any of the circumstances in paragraph 4(c)(i) of the Policy apply. On the contrary, the record shows that the disputed domain name was used, within a short period of its registration, to pass off the operator of the disputed domain name as the Complainant with regard to commercial proposals to third parties. The Panel notes that the investigation by the independent debt collection agency concluded that the Respondent’s email communications had “all the hallmarks of fraud”.
In these circumstances, the Panel considers that on the balance of probabilities the Respondent is engaged in some form of deceptive activity with a view to commercial gain and that the disputed domain name was registered with such activity in mind. As this Panel has found in two recent cases involving the use of domain names in connection with deceptive email communications, Home Retail Group v. Home Retail Group / Rafique Holding, WIPO Case No. D2012-2335 and Saudi Arabian Oil Company v. Name Redacted,WIPO Case No. D2013-0105, such activity cannot confer any rights or legitimate interests upon the registrant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the requirements of paragraph 4(a)(ii) of the Policy have therefore been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The evidence in the present case indicates that the Respondent has used the disputed domain name for an allegedly fraudulent scheme involving the use of the Complainant’s identity in emails and on a corresponding website for the purposes of deceiving the recipients of such emails or the visitors to such website into believing that they were dealing with the Complainant, a long-established UK company.
As this Panel noted in Home Retail Group, supra, the examples of bad faith registration and use listed in paragraph 4(b) of the Policy are not exhaustive of all circumstances from in which bad faith may be found. Based on the evidence and submissions of the Complainant in the present case together with the report on the independent investigations of the debt collection agency, the Panel finds on the balance of probabilities that the Respondent registered and used the disputed domain name as part of a scheme which intentionally targeted both the Complainant’s corporate identity and its SYNTHITE trademark to provide apparent credibility to certain email communications with third parties. In the Panel’s opinion, the said emails are likely to have had various fraudulent schemes as their ultimate object. The Panel is satisfied that this conduct of the Respondent constitutes registration and use in bad faith of the disputed domain name within the meaning of the Policy.
In all of these circumstances the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith and thus that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied. 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.
Andrew D. S. Lothian
Sole Panelist
Date: October 22, 2013
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