The Complainant is Granuldisk Aktiebolag of Malmö, Sweden, represented by Varumärkesombudet AB, Sweden.
The Respondent is Rolf Mathiasson of Bjärred, Sweden, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Ascio Technologies Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2015. On July 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 6, 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 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 July 21, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 10, 2015. The Response was filed with the Center on August 3, 2015.
The Center appointed Anders Janson as the sole panelist in this matter on August 26, 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.
To the best of the Complainant’s knowledge, the language of the Registration Agreement is English, a copy of which is provided as Annex 2 to the Complaint. The Complaint has therefore been submitted in English.
The Center acknowledged the receipt of the Respondent’s Response on August 3, 2015 and notified the Respondent that the due date for Response was August 10, 2015. Accordingly, the Center asked for a confirmation that the provided communication was to be regarded at the Respondent’s complete Response. If a confirmation was provided by the Respondent, the communication was to be so regarded by the Center and shall proceed accordingly to appoint the Panel. In the absence of such confirmation, if the Center did not receive any further communication from the Respondent by the due date for Response, the Center regarded the provided communication from August 3, 2015 as the Respondent’s Response and therefore proceed to appoint the Panel. On August 8, 2015, the Respondent confirmed that the provided Response was the complete Response and also provided further information regarding an incorrect translation and claimed the forgery of a signature. On August 11, 2015 the Center then acknowledged the receipt of the two e-mail communications from the Respondent and forwarded them to the Panel’s attention. 4. Factual Background
The Disputed Domain Name was registered on December 9, 2007.
The Complainant holds the following trademark registrations:
- Community Trademark Registration No. 6239651 POWER GRANULES in classes 3, 7 and 11, applied for on August 15, 2007, and registered on July 28, 2008;
- Community Trademark Registration No. 12503066 POWER GRANULES for class 7 and 11, applied for on January 15, 2014 and registered December 11, 2014;
- Community Trademark Registration No. 13009402 POWER GRANULES (device) for class 3, 7, and 11, applied for on June 18, 2014 and registered on November 25, 2014;
- International Trademark Registration No. 1236725 POWER GRANULES (device) for classes 3, 7, and 11 (designated in India and Vietnam), applied and registered on December 16, 2014. 5. Parties’ Contentions A. Complainant
The Complainant’s core business is the development, production and sale of equipment and systems designed primarily for cleaning soiled goods, and related business. The Company was founded in 1987 and currently has 57 employees. The Complainant is the market leader in the field of commercial pot washers and the turnover in 2014 was SEK 148 939 000.
Furthermore, the Complainant is the proprietor of more than 36 trademark and design registrations in the European Union and four of them consists of or contain the combination of the words “power” and “granules”. The various trademark registrations cover an extensive range of goods in classes 3, 7 and 11. The trademark POWER GRANULES is used for goods in the Complainant’s pot washers which efficiently clean pans and eliminate prewashing. Dishwashers from the Complainant use goods with the mark POWER GRANULES mixed with high-pressured water and a small amount of detergent to wash pots, pans and other kitchen utensils.
In 2007, the Complainant decided to increase sales and initiated a process and other relevant preparations, including the registration of the trademark POWER GRANULES. In 2014, the Complainant launched a new website and decided to strengthen the link between the pot washers and the consumables by attempting to register the domain name . During this process, the Complainant discovered that the Disputed Domain Name was already registered by a former employee of the Complainant.
In 1994, the Respondent was employed by the Complainant in its capacity as service technician. On April 23, 2007, the Respondent decided to resign from his employment for the Complainant. The notice period was three months and on July 22, 2007, the employment relationship was terminated.
The Respondent is the holder of the Disputed Domain Name and it does not resolve to a web site or other online presence. Prior to the issuing of the Complaint, the Complainant sent a letter to the Respondent on February 3, 2015 demanding a transfer of the Disputed Domain Name . The Respondent replied on February 9, 2015, maintaining his right in the Disputed Domain Name. As it is the Complainant’s view that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that it was registered and is being used in bad faith, the Complainant requests the Panel to decide that be transferred to the Complainant, based on the following legal grounds.
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights according to paragraph 4(a)(i) of the Policy. The Disputed Domain Name is identical to the Complainant’s trademarks mentioned above under Section 4 of this Decision. Registrations in which the Complainant has rights as the relevant part of the Disputed Domain Name in issue is “powergranules”, and that this is clearly identical with or confusingly similar to the various POWER GRANULES trademarks which are registered and owned by the Complainant.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name according to paragraph 4(a)(ii) of the Policy. The Disputed Domain Name does not resolve to a website or other online presence or that a website or other online presence is in the process of being established which will use the Disputed Domain Name. Further, there seems not to be any advertising, promotion or display to the public of the Disputed Domain Name.
The Complainant contends that due to the fact that the Respondent is a former employee and registered the Disputed Domain Name on December 9, 2007, which is after the date which the Complainant filed a trademark application on August 15, 2007 for the mark POWER GRANULES, indicates that the Respondent selected the Disputed Domain Name with the knowledge of the Complainant’s impending rights in order to take advantage of the Complainant’s likely rights in that trademark.
Furthermore, the Complainant has neither licensed nor otherwise permitted the Respondent to use the Disputed Domain Name or the POWER GRANULES trademarks. Consequently, it cannot be held that the Respondent before any notice of the dispute used or has made necessary preparation to use the Disputed Domain Name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, or that the Respondent has been commonly known by the Disputed Domain Name or that the Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name. Therefore, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name that is the subject of the Complaint.
The Disputed Domain Name was registered and is being used in bad faith according to paragraphs 4(a)(iii), 4(b) of the Policy. The Complainant contends that evidence of the Disputed Domain Name was registered and is being used in bath faith is established by the following circumstances. The Disputed Domain Name has been selected in bad faith as the Respondent must have been aware of the Complainant’s impending rights due to the Respondent’s earlier employment.
There is no doubt as to the Respondent’s knowledge at the time of registration and it is highly unlikely that the Respondent just happened to unintentionally select the Complainant’s mark. The inference may be drawn therefore that in some way the Respondent hoped to take advantage of the fact that the Disputed Domain name registration prevented the Complainant from reflecting the mark in a corresponding domain name.
Furthermore, it is not possible to conceive a plausible circumstance in which the Respondent could legitimately use the domain name. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s trademark rights at the time of registration. These findings must lead the Panel to conclude that the Disputed Domain Name has been registered by the Respondent in bad faith.
Regarding the additional requirement that the Disputed Domain name “is being used in bad faith” according to paragraph 4(a)(iii) of the UDRP recognizes that inaction (e.g. passive holding) in relation to a domain name registration can constitute a domain name being used in bad faith. This is due to the fact that the Disputed Domain name does not resolve to a web site or other online presence or that a web site or other online presence is in the process of being established which will use the domain name. The Respondent’s behavior of registering the Disputed Domain Name in bath faith indicates the intention to hold the Disputed Domain name for a future active use in a way which would be competitive with or otherwise detrimental to the Complainant. Thus, these circumstances in respect of the particular facts of this specific case show that the Respondent’s passive holding amounts to bad faith.
Supporting these arguments there are previous decisions under the Policy for the proposition that passive use in certain circumstances can constitute abusive use. The following cases support these arguments: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Westdev Limited v. Private Data,WIPO Case No. D2007-1903. Therefore it is clear that the Respondent has registered the Disputed Domain Name in bad faith and the Respondent is continuing to act in bad faith. B. Respondent
The Respondent registered the Disputed Domain name on December 12, 2007 which is almost eight months before the Complainant registered their trademark on July 22, 2008. Furthermore, the Disputed Domain Name was registered more than seven years ago. The Disputed Domain Name has not been used in any commercial manner in conflict or violation with any of the Complainant’s registered trademark. Furthermore, it is permitted to use the Disputed Domain Name within other trademark classifications except for the ones where the Complainant has registered trademarks, and doing so is not prohibited. It shall also be noted that the word “granules” is a general word that only describes particles of a certain substance and is used within several industries and within different materials.
The Complainant is implying that the Respondent would have had access to the product name “powergranules” through the Respondent’s employment at the Complainant’s company. This statement is false and the employees of the Complainant are aware of these facts even though the Complainant has not mentioned this in the Complaint. During the time that the Respondent was employed by the Complainant, there has never been any use of a product or any terminology with the name of “powergranules”.
If it is correct that the Complainant should have rights in the Disputed Domain Name, then it would be possible for any company to register a trademark identical with an already existing and legally registered domain name, and afterwards on a retroactive basis claim the “rights” to this domain name.
Accordingly, no violation of the Complainant’s trademark has occurred and the Disputed Domain Name has not been used in bad faith with the purpose of damaging the Complainant in any way. The Complainant can therefore not claim any rights to have the Disputed Domain Name transferred to them.
Furthermore, the Complainant has translated the Respondent’s employment contract and also copied the Respondent’s signature onto the translated document. The Respondent has never signed this English document, and copying the Respondent’s signature is forgery. 6. Discussion and Findings
The Respondent has provided a Response and the Panel therefore has to consider both the Complainant’s and the Respondent’s provided communications and arguments. The Complainant must establish that it is entitled to a transfer of the Disputed Domain Name under the Policy and the Respondent must establish why a transfer should not occur.
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark 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.
The Respondent must then provide counter arguments to support why the Complainant’s arguments shall be disregarded. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights to POWER GRANULES with reference to the trademark registrations provided. The Disputed Domain Name is and therefore contains the Complainant’s trademark POWER GRANULES in its entirety with the addition of the generic Top-Level Domain Name (gTLD) “.com”. As established in many previous cases the latter may be disregarded for the purpose of determining confusing similarity. The Disputed Domain Name is therefore identical to the Complainant’s registered trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
In this case, the Complainant has in addition to showing its rights in the Community Trademarks established a prima facie case of the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name.
Therefore, the burden of production shifts to the Respondent to bring forward appropriate allegations or evidence of its rights or legitimate interests. The Respondent has replied to the Complainant’s contentions and stated that it is permitted to use the Disputed Domain Name within other trademark classifications except for the ones where the Complainant has registered trademarks, and doing so is not prohibited. The Respondent therefore claims to have rights to the Disputed Domain Name as it does not collide, interfere or harm the Complainant in any way. However, as mentioned above, the Disputed Domain Name has remained passive since its registration. In this respect, the Panel finds that the Respondent has not proven any rights or legitimate interests in the Disputed Domain Name. Upon consideration of the available record, the Panel is satisfied that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Respondent communicated that if the Complainant should have rights to the Disputed Domain Name, then it would be possible for any company to register a trademark identical with an already existing and legally registered domain name, and afterwards on a retroactive basis claim the “rights” to this domain name. However, the Respondent’s employment for the Complainant was terminated on July 22, 2007, the Complainant applied for trademark registrations on August 15, 2007 and the Respondent registered the Disputed Domain Name on December 9, 2007. The Complainant’s application was therefore made before the registration of the Disputed Domain Name. In the circumstances, and as further discussed under the third element, the Panel therefore finds it highly unlikely that the Respondent would not have been aware of the Complainant’s plan to register the trademark which further indicates that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy and the Respondent has failed to provide sufficient allegations or evidence of its rights or legitimate interests. C. Registered and Used in Bad Faith
The Respondent was a former employee of the Complainant and the Panel finds it unlikely that the Respondent was unaware of the Complainant’s plans to apply for trademark registration on August 15, 2007. The Panel also finds that the Complainant’s right to the trademark predates the registration of the Disputed Domain Name. Taking into consideration the former employment and the date of the Complainant’s application for the CTM trademark registration, it is highly unlikely that the Respondent had no knowledge of the Complainant’s trademark at the time of registration of the Disputed Domain Name. Previous UDRP decisions provided by the Complainant also show that even the passive holding of a domain name may evidence that the registration of a domain name was registered and is being used in bad faith.
The Respondent has communicated that no violation of the Complainant’s trademark has occurred and that the Disputed Domain Name has not been used in bad faith with the purpose of damaging the Complainant in any way. However, the Panel finds that the Respondent must have had some purpose in registering the Disputed Domain Name shortly after the employment was terminated. The Respondent has not provided any explanation for what the intended use of registering the Disputed Domain Name was. The Panel finds it likely that the Respondent registered the Disputed Domain Name to prevent the Complainant from reflecting its POWER GRANULES mark in a corresponding domain name.
Therefore, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. Accordingly, the Panel finds that the Complainant has fulfilled the requirements under 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 Disputed Domain Name be transferred to the Complainant.
Anders Janson
Sole Panelist
Date: September 11, 2015
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