Complainant is Afton Chemical Corporation of Richmond, Virginia, United States of America, represented by Emch, Schaffer, Schaub & Porcello Co., L.P.A., United States of America.
Respondent is Frank Cole, Mohammed Vissaka of "Nevada, Arizona", United States of America 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 28, 2014. On May 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 29, 2014, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 24, 2014.
The Center appointed Bradley A. Slutsky as the sole panelist in this matter on July 2, 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. 4. Factual Background
Complainant is engaged in the chemical and fuel additives industries and has registered trademarks for AFTON, AFTON CHEMICAL and AFTON CHEMICAL & design with dates of first use at least as early as 2004. Respondent registered the disputed domain name on January 30, 2014. The disputed domain name does not lead to an active website. On May 2, 2014, Complainant wrote to Respondent and asserted that the disputed domain name was registered in bad faith and should be transferred to Complainant for USD 250. The case file does not contain a response to Complainant's letter. 5. Parties' Contentions A. Complainant
Complainant asserts that it owns various trademark registrations for AFTON, AFTON CHEMICAL and AFTON CHEMICAL & design, and has attached related registration certificates to the Complaint. Complainant asserts that it "is well known in the chemical and fuel additives industries, and has used Complainant's Marks globally since at least as early as 2004, and long before Respondent registered the Disputed Domain." Complainant notes that the disputed domain name differs from Complainant's AFTON CHEMICAL mark only by the addition of the letter "s", and that the disputed domain name is identical or confusingly similar to Complainant's AFTON CHEMICAL and AFTON marks.
Complainant asserts that it has no relationship with Respondent, has not given Respondent permission to use Complainant's marks, has rights that precede Respondent's registration of the disputed domain name, and that Respondent has not shown any use or preparation to use the disputed domain name in connection a bona fide offering of goods or services, as the disputed domain name does not have a web server associated with it. Complainant also asserts that the term "afton" is not a common term with a generic or descriptive meaning, and therefore "is not one that Respondent would tend to legitimately choose."
Complainant further asserts that the following circumstances support a finding of bad faith:
"(a) Respondent's actual or constructive knowledge of Complainant's rights, (b) Respondent knew or should have known of Complainant's rights, (c) false and incomplete WhoIs information associated with the Disputed Domain, (d) inconceivable legitimate use, (e) Respondent's lack of response to Complainant's letter notifying Respondent of Complainant's rights and demanding that Respondent transfer the Disputed Domain to Complainant for a reasonable sum, and (f) Respondent's recent pattern of registering domains that include third party trademarks." B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings "shall 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".
Under paragraph 4(a) of the Policy, Complainant must prove the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights".
Complainant's trademark registrations demonstrate that Complainant has rights in the AFTON and AFTON CHEMICAL marks, dating back to at least 2004, approximately 10 years prior to Respondent's registration of the disputed domain name.
The disputed domain name consists of the AFTON CHEMICAL mark without the space in middle and with the letter "s" appended to the end, followed by the ".com" generic top-level domain ("gTLD"). The removal of spaces between separate words – which is a common method of forming domain names out of multiple words because spaces are not permitted in .com domain names (see "/rfc/rfc1035.txt") – does not avoid confusing similarity to the mark. See Marine Toys for Tots Foundation v. Jim Gayles,WIPO Case No. D2001-0088 ("The deletion of the spaces between the words in the mark is not distinctive"). Nor does the addition of an "s", to make a word plural, avoid confusing similarity. See Corcom, Inc. v. Jazette Enterprises Limited,WIPO Case No. D2007-1218 ("The addition of an 's' in the disputed domain name is a purposeful type of misspelling, particularly as an 's' is often added to words to denote a plural or ownership. This appears to be a case of 'typo squatting' – conduct which creates a virtually identical and/or confusingly similar mark to the Complainant's trademark for the purposes of paragraph 4(a)(i) of the Policy.").
Similarly, considering only the Complainant's AFTON mark, the addition of a generic word such as "chemical" that describes the Complainant's business increases the confusing similarity between the disputed domain name and Complainant's mark. See Delta Air Lines, Inc. v. Ruslan Moussaev,WIPO Case No. D2009-0718 ("Use of the word 'flys', which describes the service Complainant provides and which is associated with its trademark, tends to increase rather than diminish the confusing similarity between the Domain Name and Complainant's mark."). The addition of the ".com" gTLD also does not detract from confusing similarity. WRc plc v. W&R Corp.,WIPO Case No. D2007-1284 ("The addition of the generic top-level domain '.com' is insufficient to distinguish the domain name from Complainant's mark."); Amedia Limited v. Bkarato,WIPO Case No. D2008-0567 ("The addition of the gTLD in the domain name can be disregarded for these purposes"); Deutsche Lufthansa AG v. Nadeem Qadir,WIPO Case No. D2009-0003 ("The addition of a gTLD and a generic term […] that has an obvious relation to Complainant's business is insufficient to overcome the confusing similarity that results from using Complainant's [ ] mark in the circumstances here presented.").
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Complainant also must demonstrate that Respondent has "no rights or legitimate interests in respect of the domain name". Paragraph 4(a)(ii) of the Policy.
"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 [Respondent's] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):
(i) before any notice to [Respondent] of the dispute, [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) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or
(iii) [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."
Policy, paragraph 4(c).
There is no evidence that Respondent was making a bona fide use of the disputed domain name before receiving notice of this dispute, or that Respondent has been commonly known by .
Indeed, the Complaint indicates that the disputed domain name does not resolve to a website, so there is no evidence of use or preparation to use the disputed domain name prior to notice of this dispute, or of legitimate noncommercial or fair use of the disputed domain name. Rather, Complainant asserts that Respondent is not affiliated with Complainant and is not licensed to use Complainant's marks. Complainant further asserts that the term "Afton" is not a common or generic term in the chemical industry, is not being used to refer to a geographic location, and therefore is not a term that Respondent would legitimately choose and instead Respondent allegedly chose the disputed domain name because of its association with Complainant.
Respondent has not submitted any Response and there is no evidence in the present record indicative of any rights or legitimate interests of Respondent. See Marriott Int'l, Inc. v. Thomas, Burstein & Miller,WIPO Case No. D2000-0610 ("No evidence was presented that at any time had the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the marks MARRIOTT REWARDS or MARRIOTT in any manner. Accordingly, the Panelist finds that the Respondent, prior to any notice of this dispute, had not used the domain name in connection with any type of bona fide offering of goods or services. Additionally, no evidence has been presented that the Respondent is commonly known by the domain name or has been making any legitimate noncommercial or fair use of the domain name without the intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied."); Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 ("In light of (i) the fact that the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks, and (ii) the fact that the word "telstra" appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.").
Accordingly, the Panel finds that the present record supports a conclusion that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant also bears the burden of establishing that the "domain name has been registered and is being used in bad faith". Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):
"[T]he following circumstances, in particular but without limitation, 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 [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented outofpocket costs directly related to the domain name; or
(ii) [Respondent has] 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 [Respondent has] engaged in a pattern of such conduct; or
(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Complainant asserts that the following circumstances demonstrate Respondent's bad faith:
"(a) Respondent's actual or constructive knowledge of Complainant's rights, (b) Respondent knew or should have known of Complainant's rights, (c) false and incomplete WhoIs information associated with the Disputed Domain, (d) inconceivable legitimate use, (e) Respondent's lack of response to Complainant's letter notifying Respondent of Complainant's rights and demanding that Respondent transfer the Disputed Domain to Complainant for a reasonable sum, and (f) Respondent's recent pattern of registering domains that include third party trademarks."
Complainant asserts that "'Afton Chemicals' is an unlikely combination of words which does not make sense unless it refers to Complainant and Complainant's industry", and that, in combination with Complainant's trademark registrations and large volume of sales, Respondent must have registered the disputed domain name with knowledge of Complainant's marks and the intent to refer to them. The Complaint and annexes support this allegation, and Respondent has not responded to contest it. This supports a finding of bad faith. See SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
The WhoIs listing for the disputed domain name also appears to contain incorrect information. It lists the registrant's street as "Kuwait, KU, KW," its city as "Nevada," its state as "Arizona," its postal code as "10008" (a zip code in New York), and its phone number as "+1.845378255097" (which is too many digits for a United States phone number, and 845 also is an area code in New York). The use of false contact information in a registration record may also be considered evidence of bad faith. CC Computer Consultants GmbH and WAFA Kunststofftechnik GmbH v. APG Solutions & Technologies,WIPO Case No. D2005-0609 ("The fact that Respondent has used false contact information, regarding post address, email address, administrative contact and fax number, when registering the domain name is also an indication of bad faith.").
In the Panel's view, the failure to respond to Complainant's demand letter in this case is also evidence of bad faith, see eBay Inc. v. SGR Enterprises and Joyce Ayers,WIPO Case No. D2001-0259, as is Respondent's registration of several other domain names that appear to be confusingly similar to third parties' trademarks. See Euronews SA v. Domain Manager,WIPO Case No. D2011-1422.
Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy 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.
Bradley A. Slutsky
Sole Panelist
Date: July 18, 2014
Full & Egal Universal Law Academy