The Complainant is SDMO Industries of Brest, France, represented by Melbourne IT DBS Inc., France.
The Respondent is Domain ID Shield Service CO., Limited of Hong Kong, China / Sinitsyn Maksim Aleksandrovich of Revda, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2013. On November 7, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 8, 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 November 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 16, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2013.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 3, 2014. 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.
On January 27, 2014 the Panel issued Administrative Panel Procedural Order No. 1, requesting the Complainant to provide evidence with respect to relevant trademark rights in Kohler, the second element of the disputed domain name . The deadline for rendering the decision was extended to February 11, 2014 in the Order.
On January 31, 2014, within the deadline set for in the Order, the Complainant submitted evidence as requested by the Panel, as well as a letter of consent by Kohler Co. to transfer the disputed domain name to the Complainant.
The language of this administrative proceeding is English, that being the language of the registration agreement. 4. Factual Background
Founded in 1966, the Complainant SDMO Industries is one of the biggest companies worldwide in the generating set market.
In 2005 the Complainant was sold to the American Kohler Co., with SDMO Industries and Kohler Co. dividing the world’s sales regions based on their existing market penetration. Between 2006 and 2008 the Complainant set up offices in Dubai (United Arab Emirates), Johannesburg (South Africa) and Moscow (Russian Federation).
The Complainant owns the following trademark registrations for the purpose of this proceeding:
- International Trademark Registration No. 566670 “stylized letter S and SDMO” registered on February 8, 1991 in numerous countries, including Russian Federation for goods and services of classes 4, 7, 9, 11, 37 and 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks (hereinafter: the Nice Classification);
- International Trademark Registration No. 1014788 “stylized letter S and SDMO” registered on May 7, 2009 in numerous countries, including Russian Federation for goods and services of classes 4, 7, 9, 11, 37, 39 and 45 of the Nice Classification.
The Complainant’s parent company, Kohler Co., of Kohler, Wisconsin, United States of America (“US”) owns the following trademark registrations for the purpose of this proceeding:
- US Trademark Registration No. 94,999 KOHLER registered on January 20, 1914 for goods of class 11 of the Nice Classification;
- Russian Trademark Registration No. 291472 KOHLER registered on June 28, 2005 for goods and services of classes 6, 11, 19, 20 and 21 of the Nice Classification.
The Complainant owns domain name registrations for since December 7, 2000, since December 4, 1998 and since April 7, 2009.
The publicly available WhoIs indicates that the disputed domain name was registered on November 19, 2012. The website under the disputed domain name features the website of Spaceweb, a Russian professional hosting business. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name comprises the name “sdmo”, which is identical to their “stylized S and SDMO” trademark in which the Complainant has long established exclusive rights based on international trademark registrations. The disputed domain name combines the brand KOHLER with the trademark of the Complainant, and this combination enhances the risk of confusion as it directly refers to the Complainant and its parent company Kohler Co. of Kohler, Wisconsin, US.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. It redirects to the web page dedicated to free hosting service of SpaceW, whose DNS hosts the disputed domain name. The Complainant contacted the Respondent and tried to find amicable solution to this dispute, but the Respondent never replied to any of its formal contacts. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP panel decisions that a respondent’s default does not automatically result in a decision in favor of the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent and registrant of the disputed domain name has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among the UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant had submitted sufficient evidence that it holds registered rights in the trademark “stylized letter S and SDMO”, but did not address the issue of trademark rights in Kohler, the second element of the disputed domain name .
Paragraph 4(a)(i) of the Policy requires that a complainant must establish “rights” in a trademark or service mark on which it is basing a claim of abusive domain name registration and use.
According to paragraph 4.5 of the WIPO Overview 2.0, a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision, and alternatively or additionally, if the panel feels that it requires supplemental information to make a decision in a proceeding, it can issue a procedural order to the parties requesting the submission of such information.
Consequently, the Panel issued a procedural order and requested the Complainant to provide evidence with respect to relevant trademark rights in Kohler, the second element of the disputed domain name .
In timely reply to the Panel’s order the Complainant provided appropriate evidence that its parent company Kohler Co., of Kohler, Wisconsin, US holds long established registered rights in the trademark KOHLER, both in US and in Russian Federation, the latter being the jurisdiction of the actual Respondent.
According to paragraph 1.8 of the WIPO Overview 2.0 in most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent of the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable.
The Complainant submitted its parent company’s formal letter stating that Kohler Co. has been aware of this administrative proceeding and consents to transfer of the disputed domain name to the Complainant should the Panel decide in it’s favor.
Based on the evidence attached to the Complaint and to the Complainant’s response to the Panel Order the Panel concludes that there is sufficient evidence of the Complainant holding registered rights in the trademark SDMO, the first element of the disputed domain name , and the Complainant’s parent company holding registered rights in the trademark KOHLER, the second element of the disputed domain name.
For the purpose of this proceeding, the Panel establishes that International Trademark Registrations Nos. 566670 and 1014788 both for “stylized letter S and SDMO” owned by the Complainant and the US Trademark Registration No. 94,999 KOHLER and Russian Trademark Registration No. 291472 KOHLER owned by the Complainant’s parent company Kohler Co., of Kohler, Wisconsin, US satisfy the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in SDMO and its parent company in KOHLER, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the SDMO trademark of the Complainant and KOHLER trademark of it’s parent company.
According to paragraph 1.2 of the WIPO Overview 2.0 in order to satisfy the threshold test for confusing similarity under the Policy the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of descriptive terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In the present case, the Complaint is based on the Complainant’s trademark SDMO and the trademark KOHLER owned by its parent company Kohler Co., of Kohler, Wisconsin, US. The disputed domain name fully incorporates both of these trademarks, SDMO of the Complainant and KOHLER of the Complainant’s parent company. Neither the SDMO nor the KOHLER trademark is a common word; in fact they identify core businesses of the Complainant and its parent company.
According to paragraph 1.2 of the WIPO Overview 2.0 the applicable top-level suffix in the domain name (in the present case “.com”) would usually be disregarded under the confusingly similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark. With this exception not being the case here, and with the disputed domain name fully incorporating the SDMO and the KOHLER trademarks on which the Complainant bases its Complaint the Panel finds that the disputed domain name is confusingly similar to these trademarks.
For all these reasons the Panel finds that the element of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, respondents may demonstrate their rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) their use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) they have been commonly known by the domain name;
(iii) they are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted uncontested evidence that it and its parent company Kohler Co. hold well-established rights in the trademarks SDMO and KOHLER.
Neither the Complainant nor its parent company Kohler Co. authorized the Respondent to use their SDMO and KOHLER trademarks in any way, and the Complainant’s and its parent company’s prior rights in the SDMO and KOHLER trademarks long preceded the date of registration of the disputed domain name.
It has been a consensus view among UDRP panels that, although the burden to prove lack of the respondent’s rights or legitimate interests in respect of the disputed domain name rests with the complainant, this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. If a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent.
The Respondent defaulted and failed to respond, and by doing so it failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case.
On the basis of all these facts and circumstances (further discussed at 6.C, below), the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you [the Respondent] 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 trademark 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 trademark 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 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 your website or location or of a product or service on your website or location.”
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
On the contrary, incorporation of the Complainant’s SDMO trademark and the Complainant’s parent company’s KOHLER trademark into the disputed domain name in their entirety is indicative to the Panel that the Respondent had obviously been aware of these trademarks at the time of registering the disputed domain name with clear intent to misappropriate their values, which is indicative of bad faith registration of the disputed domain name.
According to paragraph 3.9 of the WIPO Overview 2.0 although use of a privacy or proxy registration service is not in and of itself and indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.
In the subject case, the evidence submitted by the Complainant is convincing in respect of the fact that the Respondent opted for using the Registrar’s protected WhoIs service following receipt of the Complainant’s cease and desist letter and request to voluntary transfer of the disputed domain name. In addition, the Respondent never responded to any of the Complainant’s attempts to try to reach it and find amicable solution to the conflict. In view of the Panel all these facts and circumstances suggest that the Respondent’s primary motive for using the domain privacy service in the present case was to make it as difficult as possible for the Complainant to identify and contact the “true” registrant, which does not reflect good faith.
Since registration of the disputed domain name it has been redirected to the website of Spaceweb, a Russian professional hosting business.
According to paragraph 3.2 of the WIPO Overview 2.0 apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known mark, no response to the complaint having been filed, and the registrant’s concealment of its identity.
The evidence brought forward by the Complainant convinces the Panel of all these circumstances being present in the subject case, which merits the finding of bad faith registration and use of the disputed domain name.
For all the above discussed reasons the Panel finds that the disputed domain name was registered and is being used in bad faith and paragraph 4(a)(iii) is 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.
Zoltán Takács
Sole Panelist
Date: February 6, 2014
Full & Egal Universal Law Academy