The Complainant is PIAB AB of Täby, Sweden, represented by Domain and Intellectual Property Consultants, DIPCON AB, Sweden.
The Respondent is Nguyen, Anh of Da Nang, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2016. On August 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 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 September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2016.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 4, 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 is PIAB AB, a company that develops and manufactures a complete line of vacuum pumps, vacuum accessories, vacuum conveyors and suction cups for a variety of automated material handling and factory automation processes.
The Complainant owns several trademark registrations including the following;
Trademark
Registration Number
Registration Date
Jurisdiction
PIAB
108704
March 27, 1985
Austria
PIAB
2P-335257
November 29, 1984
Switzerland
PIAB
746022 (Application number)
June 11, 1999
Australia
PIAB
319476
November 15, 1996
Sweden
PIAB
168618
April 03, 1995
Ireland
PIAB
1225137
January 20 1983
France
PIAB
0876978
September 16, 1969
United States of America (“United States”)
PIAB
1080030
July 30, 1985
Germany
PIAB
2849781
August 21, 2008
Argentina
PIAB
362580
August 22, 2003
Sweden
PIAB
1174838
October 27, 1981
United States
PIAB
1384975
March 4, 1986
United States
PIAB
1088757
March 6, 1986
Germany
PIAB
UK00000915942
October 16,1967
United Kingdom of Great Britain and Northern Ireland (“United Kingdom”)
PIAB
626477
March 15, 1996
Mexico
PIAB
TMA623434
February 19, 2003
Canada
PIAB
0404118
October 23, 1984
Belgium, Netherlands, Luxemburg
PIAB
01130973
December 16, 2004
Taiwan, Province of China
PIAB
799851
January 27,2003
WIPO (Madrid) -
PIAB
UK00001228820
October 24, 1984
United Kingdom
PIAB
354753
April 19, 2005
India
PIAB
200400226
January 21,2003
Hong Kong
PIAB
855996
March 25, 1969
Germany
PIAB GRIP
008765422
June 11, 2010
European Union
PIAB VACUUM ACADEMY
2922654
February 1, 2005
United States
PIAB Vacuum Academy
003058831
September 13, 2004
European Union
The Respondent is Nguyen, Ahn, domiciled in Da Nang, Vietnam. The disputed domain name, was registered on December 9, 2015. The disputed domain name resolves to a website offering, what appears to be makeup related products, for sale. 5. Parties’ Contentions A. Complainant
The Complainant argues the following:
I) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that it has used some of the PIAB marks before the disputed domain name was registered.
That the disputed domain name contains the Complainant’s registered trademark.
That the disputed domain name contains the word “vacuumconyevor” which is a product that the Complainant sells under its registered marks.
That the word “vacuumconyevor” adds confusion regarding the disputed domain name’s affiliation to PIAB AB’s business.
II) The respondent has no rights or legitimate interest in respect of the disputed domain name
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name.
That the Respondent registered the disputed domain name including one of the Complainant’s trademarks without authorization by the latter.
That the Respondent has not authorized, licensed or permitted the Respondent to register neither the trademark nor the vacuum conveyor products as a domain name.
That the website to which the disputed domain name resolves is being used by the Respondent to profit from the Complainant’s business.
III) The disputed domain name has been registered and is being used in bad faith
The Complainant argues that by registering the disputed domain name consisting of its registered trademark and its most common product has demonstrated the Respondent’s bad faith in this case, that the domain name was registered with PIAB and its business in mind and that, while the Respondent stated in response to a cease-and-desist letter sent prior to the filing of the Complaint, that she would be willing to transfer the disputed domain name, said transfer has not taken place, despite several reminders sent by the Complainant. B. Respondent
The Respondent did not reply to the Complainant´s contentions. 6. Discussion and Findings
According to the Policy, to qualify for a cancellation or transfer, a complainant must prove each of the elements listed below:
I. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
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.
As the Respondent has failed to file a response to the Complainant’s assertions, the Panel may choose to accept the reasonable contentions of the Complainant as true. This Panel will determine whether those facts constitute a violation of the Policy, sufficient to order the transfer of the disputed domain name (see Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292). A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations for PIAB in many jurisdictions.
The disputed domain name is confusingly similar to the Complainant’s trademark PIAB, as it comprises said trademark in its entirety.
However, this Panel notes that, according to the evidence provided by the Complainant, its marks protect goods and services related to the manufacture of a complete line of vacuum pumps, vacuum accessories, vacuum conveyors and suction cups for a variety of automated material handling and factory automation processes. Hence, the addition of the term “vacuum conveyor”, descriptive of the Complainant’s products, is insufficient to avoid a finding of confusing similarity under the first element of the UDRP (see Fluke Corporation v. Supremelines Co., Ltd,WIPO Case No. D2015-1619).
The addition of the generic Top-Level Domain (“gTLD”) “.com” is immaterial for purposes of assessing confusing similarity (see Diageo p.l.c. v. John Zuccarini,WIPO Case No. D2000-0541).
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s PIAB trademark.
The first requirement of this Policy has been met. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
I. before any notice to the respondent of the dispute, the use by the respondent 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. the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
III. the respondent is 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 Complainant owns several trademarks around the globe. This alone is not enough to serve as proof of the fame or reputation of the trademarks PIAB; it does however show that the Complainant’s trademarks have a widely spread presence around the world.
In accordance to Annex 5 of the Complaint, uncontroverted by the Respondent, the latter has used the disputed domain name to resolve to a website controlled by her, which contained the offering of what appear to be makeup related goods or services.
The fact that the disputed domain name is composed of the trademark PIAB alongside terms that describe one of the products offered under the Complainant’s trademarks, i.e.,“vacuum conveyor”, suggests that the Respondent had knowledge of the PIAB trademarks and the goods covered by them at the time of registration of the disputed domain name.
According to the Complainant, the Respondent registered the disputed domain name without its authorization, and without having a legitimate reason to incorporate the trademark PIAB in the disputed domain name. The Respondent did not submit any argument or proof to rebut this assertion.
Nothing on the record suggests that the Respondent has been commonly known by the disputed domain name.
This Panel considers that the Complainant has established a prima facie case that the Respondent has no rights to or legitimate interests in the disputed domain name thus, which shifts the burden of production to the Respondent (see Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467; Cellular One Group v. COI Cellular One, Inc.,WIPO Case No. D2000-1521; and Skipton Building Society v. , Private Registration,WIPO Case No. D2011-0222).
The Respondent has provided no arguments or evidence to prove a legitimate use over the PIAB trademark, neither has it provided evidence of a legitimate interest over the disputed domain name (see Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong,WIPO Case No. D2003-0408).
The second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
I. circumstances indicating that the respondent has registered or the respondent has 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
II. the respondent has 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 the respondent has engaged in a pattern of such conduct; or
III: the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
IV. by using the domain name, the respondent has intentionally attempted 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 Complainant has submitted evidence showing that it sent a cease-and-desist letter to the Respondent, to which the Respondent allegedly stated that she would be willing to transfer the disputed domain name to the Complainant. Nevertheless, no evidence has been provided regarding said reply. The Respondent has not filed any Response to the Complaint.
Concerning the question of whether the disputed domain name was registered in bad faith, it is necessary to underline that the Respondent registered the disputed domain name containing not only the PIAB trademark but also the term “vacuum conveyor” which is descriptive of a product that the Complainant sells under its registered trademark PIAB. This Panel considers it unlikely that the Respondent chose this domain name randomly, and rather, that the disputed domain name was registered to increase the traffic of Internet users to the Respondent’s website associated to the disputed domain name.
As other Panels have stated, a finding of bad faith may be made whether the Respondent knew or should have known of the registration and use of the trademark prior to registering the disputed domain name (see Maori Television Service v. Damien Sampat,WIPO Case No. D2005-0524; Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365; and Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320).
As stated above, the disputed domain name has been used to resolve to a website in which the Respondent offered products which seem completely unrelated to the Complainant’s trademarks. This has varying potential outcomes, none of which seem to be a probable bona fide offering of goods, or legitimate noncommercial, or fair use.
In light of the above, this Panel concludes that the Respondent has registered and used the disputed domain name with the sole purpose of intentionally attracting, for commercial gain, Internet users to her website, by creating a likelihood of confusion with the Complainant’s PIAB marks alongside the products they protect, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent’s actions fall under the premise established in paragraph 4(b)(iv) of the Policy.
The third element of the Policy is satisfied. 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.
Kiyoshi Tsuru
Sole Panelist
Date: October 18, 2016
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