1.1 The Complainant is United Phosphorus Limited of Mumbai, India, represented by Boehmert & Boehmert, Germany.
1.2 The Respondent is Monagro Sp.z o. o. of Czestochowa, Poland. 2. The Domain Name And Registrar
2.1 The disputed domain name (the "Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2014. On September 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 12, 2014, 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.
3.2 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").
3.3 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 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 10, 2014.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on October 20, 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
4.1 The Complainant is a company incorporated in India. It is the largest manufacturer of agrochemicals in India. It has subsidiary offices in Australia, Bangladesh, Brazil, China, Canada, Columbia, Denmark, France, Germany, Hong Kong, Indonesia, Japan, Korea, Mauritius, Mexico, the Netherlands, New Zealand, Russia, Italy, Turkey, Spain, South Africa, Taiwan, USA, UK, Viet Nam and Zambia, and has customers in 123 countries.
4.2 One of the Complainant's products is a fumigant insecticide called "Quickphos". This product has been marketed and sold worldwide since the 1960s. In November 2001 it obtained an authorisation to sell this product in Poland. In 2012 it sold approximately 2.5 million kilograms of this product worldwide, of which approximately 200,000 kilograms were sold in Europe and 40,000 kilograms in Poland.
4.3 The Complainant is the owner of Community Trade Mark No. 11661154 for the word mark QUICKPHOS in class 5. That mark was filed on March 15, 2013, was published on April 30, 2013 and proceeded to grant on August 7, 2013.
4.4 The Respondent is a company based in Poland that sells and distributes, inter alia, agrochemical products. One of the products it sells is "Greenphos", which competes with the Complainant's products.
4.5 The Respondent registered the Domain Name on July 1, 2013. Subsequently, the Domain Name was used for a website that promotes the products and services of Agrotim Sp. z.o.o ("Agrotim"). The website contained text in Polish, a translation (provided by the Complaint in the Complaint) of which into English is as follows:
"[…] Products. We sell wholesale and retail preparations for disinfection, Debian bug squashing party and pest control. We have the lowest prices on the market, the most effective products to eliminate pests storage, mosquitoes, ticks, black flies, flies, wasps, bedbugs, larvae and rodents."
The MEGA PROMOTION WE RECOMMEND PROVEN FORMULA QUICKPHOS PELLETS 56 GE and EFFICIENT PRODUCT rodent control "LAST DAY RAT".
Pest control has never been so easy [ ...]"
4.6 However, the website also goes on to provide information about the Complainant's "QuickPhos" product (allegedly including a special promotion of the Complainant's "QuickPhos" product).
4.7 The Respondent has also registered the domain name . The page displayed on a website operating from the domain name, states that further information in relation to "Quickphos" can be found at a website operating from the domain name . However, only the Respondent's competing "Greenphos" product is marketed on that website.
4.8 The Complainant sent an email to the Respondent about the Domain Name in May 2014 and in Response the Respondent offered to sell the Domain Name to the Complainant. More recently, the webpage operating from the Domain Name has changed to that of a parking page generated by the domain host S.A.
4.9 On September 6, 2013 Agrotim registered the domain name . 5. Parties' Contentions A. Complainant
5.1 So far as the underlying facts are concerned, the Complainant maintains that although the Respondent had purported to promote the Complainant's "Quickphos" product from its website, it has not sold this product to either the Respondent or Agrotim. From this and the content of the Respondent's website operating from the and domain names, it concludes that the Respondent's real intent in registering the Domain Name was to promote its competing "Greenphos" product. It also asserts that the term "Quickphos" "is not generic but a fictitious brand name the Complainant came up with more than 30 years ago".
5.2 The Complainant contends that the Domain Name is identical to the Complainant's trade mark. It also asserts that the registration of a domain name before a complainant acquires rights in a registered trade mark does not prevent a finding of identity or confusing similarity.
5.3 The Complainant maintains that there is no connection between it and the Respondent and it has not authorised the Respondent's registration or use of the Domain Name. Given this and the way it claims the Domain Name has been used, it maintains that the Respondent has no rights or legitimate interests in the Domain Name.
5.4 Further, it claims that the Respondent's use of the Domain Name falls within the example of facts and circumstances that might evidence bad faith registration set out at paragraph 4(b)(iv) of the Policy. It contends that the fact that the Domain Name predates the Complainant's trade mark does not matter where, as it maintains in the case here, the Domain Name was registered to take advantage of confusion with the Complainant's "potential … rights". B. Respondent
5.5 The Respondent did not reply to the Complainant's contentions. 6. Discussion And Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the present dispute based upon the Complaint, notwithstanding the failure of any person to lodge a formal Response.
6.2 Notwithstanding this default, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Policy, paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel shall "draw such inferences therefrom as it considers appropriate". A. Identical or Confusingly Similar
6.4 The Domain Name comprises the term "Quickphos", in respect of which the Complainant owns a Community Trade Mark, combined with the ".com" generic Top-Level Domain ("gTLD"). In the circumstances, the Panel holds that the Domain Name is at least confusingly similar to a trade mark in which the Complainant has rights. As to whether it is identical, see the Panel's comments in Philip Morris USA Inc. v. Marlboro Beverages / Vivek SinghWIPO Case No. D2014-1398.
6.5 The Panel also agrees with the Complainant's contention that it does not matter for the purposes of paragraph 4(a)(i) of the Policy that the rights relied upon pre-date the registration of the Domain Name. However, the Panel is also not convinced that it is correct to say that as at the date of the registration the Complainant did not have pre-existing rights. Article 9 of the Community Trade Mark Regulation (Council Regulation (EC) No 207/2009) states as follows:
"The rights conferred by a Community trade mark shall prevail against third parties from the date of publication of registration of the trade mark. Reasonable compensation may, however, be claimed in respect of acts occurring after the date of publication of a Community trade mark application, which acts would, after publication of the registration of the trade mark, be prohibited by virtue of that publication. The court seized of the case may not decide upon the merits of the case until the registration has been published."
6.6 In other words, a Community trade mark may provide a right against others from the date of publication of the application for that mark provided that the application proceeds to grant.
6.7 In this case, the application for the mark relied upon by the Complainant was published two months prior to the registration of the Domain Name, and proceeded to grant prior to the commencement of these proceedings. In the circumstances, this Panel would if necessary have concluded that the Complainant had rights in a trade mark that pre-dated the registration of the Domain Name for purposes of discussion under the second and third element.
6.8 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
6.9 The Complainant contends that the Respondent has, regardless of what actually appeared in a website operating from the Domain Name, in fact registered and used the Domain Name in order to promote a competing product to that sold by the Complainant. For the reasons set out under the heading "Registered and Used in Bad Faith" below, the Panel is prepared to accept on the balance of probabilities that this is correct. Such use does not involve a bona fide offering of goods and services, and therefore does not provide a right or legitimate interest for the purposes of the Policy.
6.10 Even were this not the case and the Domain Name was registered with a bona fide intention to promote the Complainant's product (and ignoring the fact that the website operating from the Domain Name appears at one stage to have promoted a product with the name "Last Day Rat"), in the opinion of this Panel, the Respondent would not have a legitimate interest in the Domain Name.
6.11 As is recorded under section 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"):
"Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e.,). [See further View 1 in paragraph 2.4 below regarding impersonation.]"
The current case is a case of the sort described in the second paragraph of section 2.3 of the WIPO Overview 2.0. Further, this Panel is one of the panels that believes that in such a case it is difficult for a respondent to establish rights or legitimate interests. See e.g Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227
6.12 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith
6.13 The Panel accepts that the Domain Name was registered by the Respondent because of the Complainant's use of the term "Quickphos" in respect of the Complainant's products. The reasons for this include the facts that the term "Quickphos" is a manufactured one, that the Respondent has been engaged in the sale of products that compete with the Complainant's "Quickphos" product and that there are direct reference to the Complainant's "Quickphos" product on the website that operated from the Domain Name.
6.14 The more difficult question is whether the Complainant is correct in its contention that even though on its face the Domain Name has been used at least in part to provide information about the Complainant's product, this is (in the words of the Complainant) "decoy" use, and the real position is that the Respondent is using the reputation of the Complainant's QUICKPHOS mark with a view to selling its competing "Greenphos" product.
6.15 The Panel notes in this respect the Complainant's assertion that it has not sold genuine "Quickphos" product to the Respondent (nor to Agrotim), but it also seems to allege that the Respondent's business includes the parallel importation of products. Given this, the Panel is not prepared to infer from the mere fact that the Complainant has not sold "Quickphos" product to the Respondent, that the Respondent could not be selling genuine "Quickphos" products (at least in the absence of any further explanation as to why this must be so).
6.16 Nevertheless, that is not the sole extent of the Complainant's contentions in this respect. It points to the fact that although the Respondent claims on a website operating from the domain name that details as to how it is possible to acquire the "Quickphos" product can be found on a website operating from the domain name, that is not the case. Instead it is the competing "Greenphos" product that is promoted. In light of this and in the absence of any explanation from the Respondent as to why the Domain Name was registered, the Panel accepts on the balance of probabilities that the Complainant's claims of "decoy" use are correct and that for this reason the Domain Name was registered and used in bad faith.
6.17 Even, if this were not correct, it is unlikely to have made any difference to the outcome in this case. The reason for this is that the Domain Name takes the form of the Complainant's mark with the ".com" gTLD, and that the Panel would most likely have concluded that this is a case of "impersonation" of the Complainant. This is so, even if the fact that the Complainant is not responsible for the website operating from the Domain Name would have been apparent when the Internet user reaches that site (as to which see the reasoning in in Research in Motion Limited v. One Star Global LLC, supra).
6.18 For reasons that have been explained under the heading "Identical or Confusingly Similar" above, it is likely that insofar as the Complainant's Community Trade Mark is concerned, the Complainant has relevant rights that pre-date the registration of the Domain Name. However, even if this were not so, the Panel also accepts the Complainant's claim that in this case it does not matter. As section 3.1 of the WIPO Overview 2.0 records:
"In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark…"
6.19 The Panel accepts that even if no rights existed prior to registration, the Domain Name was registered with the specific intention of taking advantage of trade mark rights that were likely to come into existence thereafter, bearing in mind, inter alia, the use of that term by the Complainant for its products and the grant of an authorisation to sell those products in Poland in 2001.
6.20 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Matthew S. Harris
Sole Panelist
Date: October 23, 2014
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