The Complainants are DENTSPLY International Inc. of York, Pennsylvania, United States of America, Sirona Dental Systems, Inc. of Long Island City, New York, United States of America and Sirona Dental Systems GmbH of Bensheim, Germany, represented by Crowell & Moring, LLP, Belgium.
The Respondents are Dentsply Sirona and of Anyangsi, Republic of Korea. 2. The Domain Names and Registrar
The disputed domain names and are registered with Korea Server Hosting Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2015. On November 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
On November 27, 2015, the Center notified the Parties in both English and Korean that the language of the Registration Agreement for the disputed domain names was Korean. On November 28, 2015, the Respondents requested for Korean to be the language of the proceeding. On December 2, 2015, the Complainants requested for English to be the language of the proceeding.
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 Respondents of the Complaint, and the proceeding commenced on December 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2015. On December 8, 2015, the Respondents submitted an email to the Center reiterating their language request. The Respondents did not however submit any formal response. Accordingly, the Center notified the Parties about the commencement of panel appointment process on December 28, 2015.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on January 6, 2016. 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 DENTSPLY International Inc. is a manufacturer and distributor of dental and other healthcare products. DENTSPLY International Inc. has operations in 40 countries including the Republic of Korea, and distributes its products in over 120 countries. It owns trademark registrations for DENTSPLY dating back to 1982.
The Complainant Sirona Dental Systems, Inc. is a manufacturer of dental technology which sells its products in over 135 countries. Sirona Dental Systems, Inc. employees more than 3,300 employees and has 29 offices worldwide.
The Complainant Sirona Dental Systems GmbH is a subsidiary of Sirona Dental Systems, Inc. and is the owner of the SIRONA trademark, registered in 1976. The Complainant Sirona Dental Systems GmbH licenses its SIRONA mark to the Complainant Sirona Dental Systems, Inc.
On September 15, 2015, the Complainants DENTSPLY International Inc. and Sirona Dental Systems, Inc. announced their merger and the creation of a new entity named Dentsply Sirona. Going forward, the Panel refers to the three Complainant entities collectively as "the Complainants" unless specified.
The Respondents appear to be Korean entities with presence in the Republic of Korea.
The disputed domain names were registered in September 2015 and both resolve to the same parking page. 5. Parties' Contentions A. Complainants
The Complainants contend that the disputed domain names are identical or confusingly similar to the marks in which the Complainants have rights. Specifically, the Complainant DENTSPLY International Inc. notes that it has used and owned registrations for the trademark DENTSPLY since 1982. The Complainants Sirona Dental Systems, Inc. and Sirona Dental Systems GmbH note that they have used and owned registrations for the trademark SIRONA since 1976.
The Complainants also contend that the Respondents have no rights or legitimate interests in the disputed domain names, and confirm that they have not authorized or licensed rights to the Respondents in any respect.
Finally, the Complainants contend that the disputed domain names were registered and used in bad faith. The Complainants note that the Respondents registered on September 15, 2015 and on September 22, 2015, while announcements of the merger between DENTSPLY International Inc. and Sirona Dental Systems, Inc. and the creation of a new company to be called Dentsply Sirona were made on September 15, 2015. The Complainants therefore assert that the Respondents' registrations for the disputed domain names were made in bad faith. B. Respondent
The Respondents did not formally reply to the Complainant's contentions. 6. 1. Preliminary Procedural Issues A. Language of the Proceeding
Paragraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement used for both disputed domain names was Korean, and Parties have had an opportunity to argue their position on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English.
The Respondent has requested the proceeding to be in Korean, yet chose not to submit a formal response. As discussed further below, in view of the close timing of the disputed domain name registrations to the Complainants' announcement of their merger in English, the Panel finds that the Respondents likely have at least a fair understanding of English.
Under these circumstances, the Panel finds it proper and fair to render this decision in English. B. Consolidation
The Complainants have requested that their Complaint be allowed to move forward against multiple Respondents. For the reasons below, the Panel grants this request and will proceed to consider the merits as to both disputed domain names in this decision.
As recorded in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), UDRP panels have allowed for the consolidation of complaints against multiple respondents where "(i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties." The circumstances of this case clearly point to common control of the disputed domain names: the disputed domain names, which are nearly identical, were registered within a week through the same Registrar using the same phone number, email and postal address, resolve to the same parking page and obviously intended to infer that it is the Complainants newly merged company. In these circumstances, the Panel finds consolidation fair and equitable to all Parties.
Given the obvious connection and evidence of common control in this case, the Panel will refer to the single Respondent for the remainder of the decision. 6. 2. Discussion and Findings A. Identical or Confusingly Similar
The Complainant DENTSPLY International Inc. has trademark registrations for DENTSPLY in a number of jurisdictions including the United States of America, Germany, Spain, France, and Portugal. Further, the Complainant Sirona Dental Systems GmbH has trademark registrations for SIRONA in jurisdictions including Germany, Austria, Switzerland, and Russia.
As the disputed domain names consist entirely of "dentsply" and "sirona", they are confusingly similar to the Complainants' trademarks. Additionally, given that the disputed domain names consist of the exact two terms in the same order as the name of the new company Dentsply Sirona, there is a heightened likelihood of confusion between the disputed domain names and the Complainants' marks.
For the reasons mentioned above, the Panel finds that the first element has been established. B. Rights or Legitimate Interests
On the basis of the present record, the Panel finds that the Complainants have made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once such a prima facie basis has been established, the respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain names. However, the Respondent in this case has chosen to file no response. Additionally, there is no evidence or allegation in the record that would rebut the Complainant's prima facie case and warrant a finding in favor of the Respondent on this point.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, and that the second element has been established. C. Registered and Used in Bad Faith
The evidence supports a finding of bad faith in this case. Specifically, the Respondent registered the disputed domain name on the very same day as the announcement of the creation of the Complainants' merged company Dentsply Sirona, and the disputed domain name , only several days later. It would be highly unlikely for the Respondent to have registered the disputed domain names consisting of the two terms "dentsply" and "sirona" in this exact combination at that exact time, if not for opportunistic bad faith.
The disputed domain names resolve to a parking page stating that it is in preparation and are not being actively used. The apparent lack of so-called active use does not as such prevent a finding of bad faith in the circumstances of this case. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. 2000-0003.
For the reasons given above, the Panel finds that this third and final element has been established. 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 names and be transferred to the Complainants.
Ik-Hyun Seo
Sole Panelist
Date: January 14, 2016
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