The Complainant is Milltronics USA, Inc. of Indianapolis, Indiana, United States of America, represented by Faegre Baker Daniels LLP, United States of America.
The Respondent is Domain Administrator, DVLPMNT Marketing, Inc. (DMI) of Charlestown, Federation of Saint Kitts and Nevis. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with DNC Holdings, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2015. On October 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 29, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 4, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 14, 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, a corporation set up under the laws of the State of Indiana in the United States of America, has its principal place of business in Indianapolis in the State of Indiana.
The Complainant owns the word mark MILLTRONICS (the "Trademark") for many goods and services in connection with Computer Numerical Control (CNC) technologies. U.S. trademark, registration number 3504966, registered on September 23, 2008.
The Disputed Domain Name was originally registered on October 31, 1995. At the time the Complaint was filed, the website at the Disputed Domain Name redirected to a parking page displaying sponsored links. 5. Parties' Contentions A. Complainant
The Complainant asserts that it has been a pioneer in CNC technology, helping small and medium sized shops increase productivity, make better products and compete in the new global economy.
The Complainant registered MILLTRONICS in the United States of America under number 3504966 on September 23, 2008.
According to the Complainant, the Disputed Domain Name consists solely of the Complainant's trademark so that the Disputed Domain Name is confusingly similar to the Trademark. Moreover, the addition of a generic Top-Level Domain ("gTLD") such as ".com" does not sufficiently distinguish the Disputed Domain Name from the Complainant's trademark.
The Respondent became the registrant of the Disputed Domain Name on August 31, 2013, almost five years after the Complainant's registration of the MILLTRONICS trademark.
The Complainant has exclusive and prior rights in MILLTRONICS and the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Indeed, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant's trademark.
The Disputed Domain Name redirects to a parking page displaying sponsored links.
The Complainant contends that the Respondent registered the Disputed Domain Name in bad faith. Indeed, the Respondent has a well-established history of abusing the Policy and has been involved in many prior domain name disputes in which the Respondent was found to have registered and used in bad faith other domain names incorporating third parties' trademarks.
The Complainant contends that the Respondent is deliberately using the Disputed Domain Name with a connection to the Trademark in order to mislead consumers by creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent's website.
For the foregoing reasons, the Complainant requests that the Disputed Domain Name be transferred from the Respondent to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions and is therefore in default. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (the "WIPO Overview 2.0"), the consensus view of UDRP panelists is that a Respondent's default does not automatically result in a decision in favor of the Complainant. Although, the Panel may draw appropriate inferences from a Respondent's default, paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Name and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(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 has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate."
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant's reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod's Closet,WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Name is identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of the Trademark. The Complainant registered its Trademark on September 23, 2008, while the Disputed Domain Name was originally registered on October 31, 1995.
However, the registration of the Disputed Domain Name before the Complainant acquired its registered Trademark rights in MILLTRONICS does not prevent a finding of identity or confusing similarity under the UDRP.
Indeed, "the question of priority of the Complainant's trade mark rights is not an issue to be dealt with under paragraph 4(a)(i) of the Policy, as registration of a domain name before a complainant acquires corresponding trade mark rights does not prevent a finding of identity or confusing similarity: the UDRP makes no specific reference to the date on which the owner of the trade or service mark acquired right" (see Reckitt Benckiser Plc v. Eunsook Wi,WIPO Case No. D2009-0239).
The Panel therefore turns to the second part of the inquiry.
It is well-established that "a domain name that wholly incorporates a Complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP" (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888).
Here, the Disputed Domain Name incorporates the Trademark in its entirety without any other word or letter.
Regarding the addition of the gTLD ".com" to the Disputed Domain Name, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In these circumstances, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:
"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 your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Trademark.
The Respondent's name does not bear any resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Trademark or the Disputed Domain Name. Furthermore, there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods or services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent has not rebutted this by way of a Response and the way that the Respondent has been "using" the Disputed Domain Name, see below under section C, does not support a finding of rights or legitimate interests.
In all of these circumstances, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, nonexclusive, circumstances that, 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 you 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 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 your web site or location or of a product or service on your web site or location."
In the present case, the Complainant registered the Trademark on September 23, 2008, while the Disputed Domain Name had been originally registered on October 31, 1995.
As set out in paragraph 3.1 of the WIPO Overview 2.0, "although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right".
However, the Panel finds that when the Respondent is aware of the Complainant and the circumstances indicate that the aim of the registration was to take advantage of potential Complainant's rights, bad faith can be found.
In the present case, according to the WhoIs history of the Disputed Domain Name, the Respondent acquired the Disputed Domain Name after the registration of the Trademark.1
Then, even if the Disputed Domain Name had originally been registered in 1995, for the purposes of the Policy, the Respondent's acquisition of the Disputed Domain Name constitutes registration (see MC Enterprises v. Mark Segal (N),WIPO Case No. D2005-1270).
In the absence of any explanation from the Respondent, the Panel finds it more likely than not that the Respondent intentionally registered a domain name identical to the Trademark to benefit from the good will associated with the Trademark and is using the Disputed Domain Name to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Trademark.
Additionally, the Panel finds further evidence of bad faith on the part of the Respondent in the fact that the Respondent has engaged in a pattern of registering and using domain names incorporating the trademarks or variants thereof of third parties to redirect Internet users to parking pages displaying sponsored links.
Indeed, a review of reported domain name cases reveals that the Respondent has engaged in a pattern of registering domain names that bear striking resemblance to third parties' trademarks, a pattern of conduct expressly forbidden by paragraph 4(b)(ii) of the Policy (see e.g. FirstMerit Corporation v. DVLPMNT MARKETING, INC.,WIPO Case No. D2014-1995; or Starwood Hotels & Resorts Worldwide, Inc. and Westin Hotel Management, L.P. v. DVLPMNT Marketing, Inc.,WIPO Case No. D2014-0200).
Thus, the Panel accepts, absent any Response from the Respondent, that the latter has a history of abusive registration and use of domain names that incorporate third parties' trademark rights, as contended by the Complainant. In this respect, the Respondent has been ordered to transfer domain names in numerous UDRP cases.
Noting that the Disputed Domain Name incorporates the Trademark, together with the gTLD ".com"; that no Response has been filed; that there appears to be no conceivable good faith use that could be made by the Respondent of the Disputed Domain Name, and considering all the facts and evidence submitted by the Complainant, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Nathalie Dreyfus
Sole Panelist
Date: December 23, 2015
1 The WhoIs history annexed to the Complaint shows the Disputed Domain Name registered to a third party through 2011, then to a privacy service in 2012, and then to the Respondent starting August 31, 2013. This indicates to the Panel that the Respondent acquired the Disputed Domain Name in 2012, at the earliest, after the Trademark had issued.
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