The Complainant is Fiberweb Geosynthetics Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is osa bun/ Whois Privacy Shield Services of Tokyo, Japan, represented by Osamu Bunya of Irvine, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name ("Domain Name") is registered with Cyrus the Great, LLC aka Pheenix, Inc., USA (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 13, 2015. On January 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2015, 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 sent an email communication to the Complainant on January 23, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 23, 2015.
The Center verified that the Complaint together with the amendment to 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 January 27, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2015. The Response was filed with the Center on February 16, 2015. On February 17, 2015, the Complainant filed a supplemental filing to the Complaint which the Panel has the discretion to accept and consider in reaching its decision.
The Center appointed Haig Oghigian as the sole panelist in this matter on March 5, 2015. 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 business within the Polymer Group, Inc., which is a global engineered materials company with more than 5,000 employees and which operates 14 manufacturing and converting facilities in nine countries throughout the world.
The Complainant owns trademark registrations in multiple countries including the following trademark registrations for the mark TERRAM (the "TERRAM Marks"):
- United Kingdom Reg. No. 999,181 (September 29, 1972)
- German Reg. No. 953,259 (January 4, 1977)
- German Reg. No. 984,396 (April 11, 1979)
- German Reg. No. 986,235 (June 5, 1979)
- German Reg. No. DD639,254 (February 14, 1973)
- French Reg. No. 1,217,878 (November 5, 1982)
The Complainant uses the TERRAM Marks in connection with various landscaping applications.
The Domain Name was created on August 28, 2014. 5. Parties' Contentions A. Complainant
The Complainant requests that the registration of the Domain Name be transferred from the Respondent to the Complainant.
The Complainant argues that the Domain Name is confusingly similar to the TERRAM Marks. The Domain Name incorporates the Complainant's trademark TERRAM in its entirety and adds the word "landscape" which can exacerbate the confusing similarity between the TERRAM Marks and the Domain Name.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the Domain Name as the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the TERRAM Marks. Also, the Complainant adds that the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services and instead is similar to a monetized parking page that contains links to other services and such use of the Domain Name is not a bona fide offering of goods or services under the Policy, and therefore, the Respondent cannot demonstrate any rights or legitimate interests in the Domain Name.
The Complainant also argues that Respondent is a professional "domainer" who seeks to take advantage of domain names that have lapsed, and that since a simple Internet search would have put the Respondent on notice of the Complainant's rights in the TERRAM Marks, the Respondent registered and is using the Domain Name in bad faith. B. Respondent
The Respondent requests that the Domain Name be transferred to the Complainant for the costs of the Domain Name and the site construction which total USD 250.
The Respondent argues that the "Terram" brand is virtually unknown in Japan, and therefore, he did not know the TERRAM Marks prior to January 27, 2015.
The Respondent also asserts that it bought the Domain Name lawfully, because the Domain Name was abandoned by the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark in which it has rights.
The Domain Name contains the TERRAM Marks in its entirety, and "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249. Further, since the word "landscape" is associated with the TERRAM Marks (the Complainant has landscaping products which contain the TERRAM Marks), the addition of the word "landscape" exacerbates the confusing similarity between the TERRAM Marks and the Domain Name. See Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124.
In accordance with previous UDRP decisions and for the above reasons, the Panel finds that the Domain Name is confusingly similar to the TERRAM Marks. The Complainant has therefore satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Respondent in order to demonstrate its rights or legitimate interests in a domain name. Such circumstances include:
- demonstrable preparations to use or use the domain name in connection with a bona fide offering of goods or services prior to the dispute (paragraph 4(c)(i));
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights (paragraph 4(c)(ii)); or
- legitimate, noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark (paragraph 4(c)(iii)).
In this case, the Complainant presented a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. It is clear on the given evidence that the Domain Name was registered long after the Complainant started to use the TERRAM Marks. Further, there is no evidence that the Respondent has been or is commonly known by the Domain Name. In addition, there is no evidence that establishes the existence of a relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name or any trademark confusingly similar thereto, as a domain name or for any other purposes.
Further, the Respondent's use of the Domain Name in connection with a "splog" (i.e., a spam blog which the author uses to promote affiliated websites to increase the search engine ranking or to sell links or ads) is not a bona fide offering of goods or services under the Policy. See Western Union Holdings, Inc. v. Anna Valdieri, WIPO Case No. D2006-0884; and MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC.,WIPO Case No. D2006-0550.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name, and the Complainant has therefore satisfied the requirement of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant must prove that the Domain Name has been registered and is being used in bad faith. In addition, paragraph 4(b) of the Policy gives a non-exhaustive list of circumstances that may be brought forward by the Complainant in order to demonstrate bad faith registration and use of the domain name. Such circumstances include:
- circumstances indicating that the registrant registered the domain name primarily for the purpose of selling the domain name registration to the complainant who is the owner of the trademark (paragraph 4(b)(i)); and
- registration of the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the complainant has engaged in a pattern of such conduct (paragraph 4(b)(ii));
- registration of the domain name primarily for the purpose of disrupting the business of a competitor (paragraph 4(b)(iii)); and
- use of the domain name to intentionally attempt to attract, for commercial gain, Internet users to the registrant's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's web site or location or of a product or service on the registrant's web site or location. (paragraph 4(b)(iv)).
In the Panel's view, the Respondent must have had knowledge of the Complainant's rights in the TERRAM Marks when it registered the Domain Name, since the Complainant's TERRAM Marks are unique and have been used for over 40 years. Although Respondent's Response argues that he did not have knowledge of the TERRAM Marks, Panel believes that even if Respondent did not have actual knowledge of the TERRAM Marks, as a professional domainer he had an obligation to search for such mark, and having apparently not done so can be deemed to have been on constructive notice of the TERRAM Mark and has thus acted in bad faith. "[A] finding that the respondent was on constructive notice of the complainant's registered trademark has sometimes been used to support a finding a bad faith, with the panel concluding that the respondent had relevant notice of the trademark." WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, para. 3.4.
It is also evident that Respondent attempted to change the registrant of the Domain Name from "Whois Privacy Shield Services" to "osa bun" after the Complaint was filed, which conduct is further evidence of bad faith. See PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM),WIPO Case No. D2006-0917 ("the probability of cyber-flight as the motivating intent behind the transfer to the Respondent does support a conclusion of bad faith").
Finally, the Respondent appears to be a "domainer" (i.e., one who seeks to take advantage of domain names which have lapsed), as Respondent had placed "backorders" for 22 additional domain names on the same day that Respondent placed a backorder for the Domain Name. "Where a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks." Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. The Panel also finds it convincing that a simple Google search for the words "terram landscape" would have led to the Complainant's website and put the Respondent on notice of the Complainant's rights in the TERRAM Marks, and therefore, the Panel is satisfied that the Complainant has established bad faith registration and use as required by paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Haig Oghigian
Sole Panelist
Date: March 16, 2015
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