The Complainant is SSAB Technology AB of Stockholm, Sweden, represented by Gün & Partners, Turkey.
The Respondent is Emre Erdem of Ankara, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with Everyones Internet, Ltd. dba SoftLayer (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2016. On August 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 2016, 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 August 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2016.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on September 27, 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
SSAB Technology AB, the Complainant, is a Swedish company. It is a major manufacturer of steel and steel products, with factories in Sweden, Finland and the United States of Amerıca. The Complainant also has the capacity to process and finish steel products in China and other countries and employs approximately 17,300 people in 50 countries.
The Complainant is the owner of the trademark ARMOX in a number of countries and jurisdictions, including European Union trade mark Registration No. 000492397, registered on August 24, 2001 and Turkish trademark Registration No. 192801, registered on April 20, 1999.
The Complainant manufactures and sells ARMOX branded products meeting different requirements and necessities of their clients, e.g., ARMOX 370T Class 1, ARMOX 370T Class 2, ARMOX 440T, ARMOX 500T etc. ARMOX 500T is a protection plate having a nominal 500 HBW hardness, for use in vehicles and buildings for instance.
The disputed domain name was registered on March 9, 2015. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant argues that the only difference between the protected and widely known trademark and the disputed domain name is the addition of a generic term “500”, which does not have the effect of preventing confusing similarity, particularly in this case where the descriptive term refers to an enhanced type of ARMOX product, the one having a nominal HBW hardness of 500. Given these circumstances, the Complainant contends that the ARMOX trademark and the disputed domain name are confusingly similar.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that the Respondent has no relationship with the Complainant and was not licensed or authorized to make use of its trademark ARMOX in connection with the disputed domain name.
The Complainant also asserts that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services.
Moreover, the Complainant argues that the Respondent is not commonly known by the disputed domain name whereas the Complainant has widely promoted its trademark ARMOX that is also a central feature of the Complainant’s website and is closely associated with the Complainant. On the contrary, ARMOX has been promoted and used extensively in connection with the Complainant for a considerable number of years and has as a result become well known and closely associated with the Complainant.
In the view of this, the Complainant concludes that the Respondent does not make a legitimate noncommercial or fair use of the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith.
The Complainant contends that at the time of registration of the domain name, the ARMOX trademark had been used substantially worldwide for many years and had therefore obtained the status of being well known in relation to steel and construction projects. Due to the reputation of the Complainant on this market, to the reputation of the ARMOX trademark, to the global presence and use of the trademark, the Respondent must have been aware of the existence of the Complainant and the ARMOX trademark prior to the registration of the disputed domain name.
The Complainant contends that the Respondent was aware of the ARMOX trademark’s value and that it aim to gain unfairly by creating a likelihood. It is therefore obvious that the Respondent did not register the disputed domain name incidentally and that therefore it acted in bad faith.
In addition to the ARMOX registrations, the Complainant has also registered rights to the WELDOX, PRELAQ, DOMEX and HARDOX trademarks. The Respondent used the HARDOX mark without authorization of the Complainant to register a domain name, which was previously subject to a UDRP proceeding. The Complainant contends that the Respondent registered the domain name that was the disputed domain name in SSAB Technology AB v. emre erdem, hardox turkiye,WIPO Case No. D2015-0697, so that this is not the first time the Respondent registered domain names confusingly similar to the Complainant’s trademarks.
Hence the Respondent registered the disputed domain name solely with the purpose of obtaining a domain name confusingly similar to the ARMOX trademark in order to confuse Internet users as to the origin of the website content or the affiliation of the Respondent with the Complainant.
Finally, the Complainant sent a cease-and-desist letter to the Respondent who never replied. This constitutes an additional evidence of the Respondent’s bad faith.
The Complainant requests on the basis of their contentions that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 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, (“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 the 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.
Paragraph 4(a) of the Policy requires the complainant to prove that the respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. The complainant must prove each of these three elements.
In accordance with paragraph 14 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
Two requirements must be satisfied under the first element of the Policy, (a) the Complainant must prove that it has rights in a trademark and (b) that the disputed domain name is identical or confusingly similar to this trademark.
(a) The Complainant has demonstrated that it has rights in the ARMOX trademarks, registered throughout the world, including in Turkey where the Respondent is located. If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
(b) Previous UDRP panels have held that when a domain name incorporates entirely a complainant’s registered trademark, this fact might be sufficient to establish confusing similarity for purposes of the Policy (see, e.g., RapidShare AG, Christian Schmid v. InvisibleR, Domain Admin,WIPO Case No. D2010-1059; Swarovski Aktiengesellschaft v. mei xudong,WIPO Case No. D2013-0150; Hoffmann-La Roche Inc., Roche Products Limited v. Vladimir Ulyanov,WIPO Case No. D2011-1474). It is also well established that a generic Top-Level Domain (“gTLD”) (i.e., “.com”) should typically not be taken into consideration for the purposes of evaluating whether a disputed domain name is identical or confusingly similar to the complainant’s marks in question.
In the present case, the disputed domain name entirely reproduces the ARMOX trademark which has no particular meaning and is therefore highly distinctive. Besides, ARMOX is followed by the number “500” which may refer in the context of steel plates a nominal 500 HBW hardness. This does not dispel the confusing similarity but on the contrary, enhances the risk of confusion, as it refers to the ARMOX 500T product associated to the Complainant’s business activity promoted under the trademark ARMOX.
In view of the above, the Panel considers that the Complainant has proven that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel therefore finds that paragraph 4(a)(i) of the UDRP is satisfied. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. Once the complainant establishes a prima facie case showing that the respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent. The burden of proof, however, remains with the complainant to prove each of the three elements of paragraph 4(a) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
In the present case, the Complainant has not authorized, licensed or permitted the Respondent to register or use the disputed domain name or to use the ARMOX trademark. Moreover, there is no business relationship between the Complainant and the Respondent. Also, the Respondent is not commonly known under the name “Armox”. There is no evidence that the Respondent has used or is using such term in connection with a bona fide offering of goods or services.
Furthermore, 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 ARMOX trademark or the disputed domain name.
The Complainant has therefore established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” (M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
In this case, the disputed domain name is confusingly similar to the Complainant’s trademark. The addition of the number “500” only adds to the confusion given that in the context of steel plate manufacturing and trading this may allude to the hardness of steel plates.
The Panel notes that there is no active website at the disputed domain name, and that the Respondent has failed to present any evidence of good faith use of the disputed domain name. The Panel cannot, in the circumstances of the present case, conceive of any bona fide use of the disputed domain name by the Respondent that would not have the effect of interfering with the Complainant’s rights in the ARMOX trademark. Moreover, the Respondent appears to be engaged in a pattern of registering domain names that include the Complainant’s registered trademarks.
Finally, the Complainant sent a cease-and-desist letter to the Respondent who never replied. This constitutes an additional evidence of the Respondent’s bad faith.
The Panel therefore considers that the Respondent’s unauthorized registration and passive holding of the disputed domain name to constitute bad faith registration and use of the disputed domain name within the meaning of the Policy.
Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) 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.
Michel N. Bertschy
Sole Panelist
Date: September 28, 2016
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