The Complainant is Mitsubishi Plastics, Inc. of Tokyo, Japan represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is Privacy, Privacy of United States of America. 2. The Domain Name and Registrar
The disputed domain names and are registered with Realtime Register B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2016. On November 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 26, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names. The registered holder of the disputed domain names was noted as using a third party privacy protect service which differed from the Registrar’s privacy protect service.
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 December 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2016.
The Center appointed David Stone 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 is a Japanese corporation that was established in 1943 and is engaged in the manufacture and sale of plastic products. One of the consolidated subsidiary companies within the Complainant’s corporate structure is Alpolic Corp, which claims to be one of the world’s leading manufacturers of composite materials made of aluminum and plastic which are produced under the ALPOLIC trade mark. Alpolic Corp has conducted business in Iran since 2002. The Complainant is the holder of several trade marks that consist of or contain the mark ALPOLIC, including United States of America Trademark Registration No. 1,380,058, registered on January 28, 1986.
The Respondent registered both of the disputed domain names on the same date, September 17, 2011. The disputed domain names direct to pages which are offering for sale aluminum composite panels in competition with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant asserts that both of the disputed domain names are confusingly similar to a trade mark in which the Complainant has rights. Each of the disputed domain names contains the ALPOLIC trade mark in its entirety, together with a geographic identifier (“Iran”) and does not avoid a finding of confusing similarity but actually increases the likelihood of confusion between the disputed domain names and the Complainant’s trade mark. The inclusion of a hyphen in one of the disputed domain names cannot on its own avoid a finding of confusing similarity. The position of the ALPOLIC trade mark in the “dominant position” of the disputed domain names and the addition of the word “Iran” is insufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has never licensed or in any way authorized the Respondent to register or use the ALPOLIC trade mark in any manner. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to use the ALPOLIC trade mark. The websites available at the disputed domain names appear falsely to associate with the Complainant: as such, the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent is not commonly known by this trade mark or any variation thereof, given the Complainant’s established use of ALPOLIC for 45 years. The Respondent is using the disputed domain names to direct consumers to websites that offer goods that compete with the goods the Complainant offers under the ALPOLIC mark.
The Complainant submits that the Respondent has acted in bad faith. The Respondent is falsely using websites which appear to be websites for, or otherwise associated with, the Complainant, by using home pages that are nearly identical to the Complainant’s home page and by offering for sale similar goods. The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the ALPOLIC mark.
The websites associated with the disputed domain names also contain a logo that is very similar to the Complainant’s logo, despite the absence of any licence or permission from the Complainant to do so. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the Respondent’s domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant or its related companies own at least 98 registrations worldwide for trade marks that consist of or contain the mark ALPOLIC. The Complainant has also used the mark ALPOLIC, including in Iran. The Panel finds that ALPOLIC is a trade mark in which the Complainant has rights.
The disputed domain names are confusingly similar to the ALPOLIC trade mark. The generic Top-Level domain (“.com”) may be disregarded for this purpose. The fact that the disputed domain names wholly incorporate the Complainant’s registered ALPOLIC trade mark is sufficient to establish identity or confusing similarity for the purposes of the Policy. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The addition of the geographic identifier (“Iran”) is not sufficient to alleviate confusing similarity but does in fact increase the likelihood of confusion between the disputed domain names and the Complainant’s trade mark: Inter-Continental Hotels Corporation v. Hui Lian Yang/Yang Hui Lian; a/k/a Jian Ren Zhou/Zhou Jian Ren; a/k/a Jian Guo Liu/Liu Jian Guo,WIPO Case No. D2014-0272.
The inclusion of a hyphen in one of the disputed domain names is not a relevantly distinguishable feature and will not serve to dispel Internet user confusion: Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656; Western Union Holdings, Inc. v. Anna Valdieri,WIPO Case No. D2006-0884; Di-El Industrie-Electronic GmbH and TR Electronic v. E-Orderdesk,WIPO Case No. D2007-0961.
The Panel finds that the Complainant has satisfied the condition set out in the Policy, paragraph 4(a)(i), and that the disputed domain names are confusingly similar to trade marks in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria which determine whether a domain name registrant has rights or legitimate interests in a domain name, namely if:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) as an individual, business, or other organization, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
For the reasons asserted by the Complainant summarized at section 5.A and discussed further at 6.C, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests under paragraph 4(c). The burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain names. The Respondent did not exercise its right to respond in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other argument supporting rights or legitimate interests.
Consequently, the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for purposes of the Policy, bad faith constitutes the intention to register and use a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
The Complainant contends that the Respondent is using websites at the disputed domain names that are nearly identical to its own home page. The websites at the disputed domain names are offering for sale aluminum composite panels in competition with the Complainant. This usage indicates that the Respondent is intentionally using the disputed domain names with an aim to profit from the Complainant’s trade mark by attracting Internet users from the Complainant, hence also disrupting the Complaint’s business: Six Continents Hotels, Inc. v. NA InterMos,WIPO Case No. D2006-1313.
The Respondent is in effect fraudulently impersonating the Complainant in an attempt to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the ALPOLIC trade mark: The Dow Chemical Company v. dowaychemical eva_hwang@ +86.7508126859,WIPO Case No. D2008-1078.
The inclusion of a very similar shaped logo, which differs only in colour from the Complainant’s logo on its websites using the disputed domain names, increases the likelihood of confusion between the Respondent’s websites and the Complainant: Clearwire Communications LLC v. Yvan Edwards,WIPO Case No. D2010-1440.
The Panel therefore finds that the criterion in paragraph 4(b)(iv) of the Policy is made out, and that there is sufficient evidence to find that the Respondent registered and is using the disputed domain names in bad faith. 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 Complainant.
David Stone
Sole Panelist
Date: January 17, 2017
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