The Complainant is R. T. Quaife Engineering of Kent, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Rubinstein Phillips Lewis Smith, United Kingdom.
The Respondent is Oleksandr Korhun of Kharkov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2017. On January 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 27, 2017, 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 February 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2017.
The Center appointed Peter Burgstaller as the sole panelist in this matter on February 28, 2017. 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 company incorporated and registered in the United Kingdom under the company number 00853413. The Complainant is a specialist automotive gears and axles manufacturer. The Complainant is the owner of the word mark QUAIFE filed with the United States Patent and Trademark Office (“USPTO”) on March 3, 1997, and registered on January 19, 1999; the registration number is 2218151. The Complainant’s mark is registered especially for parts for motor vehicles (Annex D).
The Respondent is the owner the disputed domain name , which was first registered on October 27, 1998 (Annex A). The disputed domain name resolves to a parking page displaying sponsored pay-per-click (“PPC”) links. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s USPTO trademark QUAIFE. The Complainant is one of the world’s leading independent specialist automotive gears and axle manufacturers with a worldwide reputation. The Complainant’s business is reputable and its mark is well known in the United States of America (“United States”), especially in the automotive industry.
The Respondent has no rights or legitimate interests in respect of the disputed domain name , since the Respondent misleads Internet users and consumers when using the disputed domain name to competitors of the Complainant through PPC links on the website at the disputed domain name.
The disputed domain name was previously owned by the Complainant; however, in 2015 or 2016 the Respondent acquired the disputed domain name in bad faith (primarily for the purpose of selling, renting or otherwise transferring to the owner of the trade mark or a competitor of the Complainant). The Respondent is using the disputed domain name in bad faith, purporting to offer or to permit others to offer goods in the United States by reference to the Complainant’s name, registered trade mark, and trading unfairly by taking unfair advantage and asserting an association illicitly with the Complainant. The disputed domain name is offered for sale through a link on the website at the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s trade mark QUAIFE. The addition of merely geographical wording to a trade mark in a domain name is not sufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. The Complainant’s trade mark constitutes the dominant component of the disputed domain name.
In fact, it is the Panel’s view that using geographical wording together with the mark QUAIFE rather strengthens the impression that the disputed domain name is in some way connected to the Complainant or at least constitutes “free ride” on the reputation of the Complainant’s name and trademark QUAIFE.
It has also long been held that suffixes such as a country code or generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
However, by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
“(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.”
In the present case the Respondent failed to submit a Response. It is well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, second edition (“WIPO Overview 2.0”), paragraph 2.1, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
Considering all of the evidence in the Complaint and the Complainant’s contentions that the Respondent is not operating and using the disputed domain name legitimately and fairly, since the Respondent misleads Internet users and consumers when using the disputed domain name by forwarding them to advertisements or sites of other automotive spare parts providers and competitors of the Complainant, the Panel concludes that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, if the following circumstances, in particular but without limitation, are found by the Panel to be present, it shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that the Respondent has registered or 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 the 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 using 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 the Respondent’s 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 the Respondent’s website or location.”
As stated in many decisions rendered under the Policy (Robert Ellenbogen v. Mike Pearson,WIPO Case No. D2000-0001, ), both conditions, namely registration and use in bad faith, are cumulative, consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
Registered in bad faith
Although the disputed domain name was first registered before the Complainant’s relied-upon trade mark right was first established (see Annexes A and D), the Panel notes the Complainant’s contentions that the Complainant was previously the registrant of the disputed domain name.
For reasons unknown to the Complainant, in late 2016 the Complainant discovered that the disputed domain name registration had been acquired by the Respondent. At this time, the Complainant’s trade mark QUAIFE was well established in the United States for more than 15 years.
There is no evidence that the Respondent has used the disputed domain name for any genuine offering of goods or services, other than for directing Internet users and consumers to links and advertisements or sites of the Complainant’s competitors. It is the Panel’s view that the Respondent must have been aware of the Complainant and its trade mark QUAIFE when acquiring the disputed domain name and therefore registered the disputed domain name in bad faith.
According to Annex F to the Complaint, the disputed domain name is being offered for sale, which also indicates in the view of this Panel that the disputed domain name was primarily acquired for the purpose of selling or otherwise transferring the disputed domain name registration to the owner of the trade mark (Complainant) or to a competitor of the Complainant.
In light of the above, the Panel finds that the Respondent has registered the disputed domain name in bad faith.
Use in bad faith
Respondent uses the disputed domain name to direct Internet users to links and advertisements or sites of the Complainant’s competitors. The Respondent therefore intentionally attempts to attract Internet users to other online locations by creating a likelihood of confusion with the Complainant’s trade mark as well as purporting to offer or to permit others to offer goods in the United States by reference to the Complainant’s name and registered trade mark.
In light of the fact that the Respondent offered the disputed domain name for sale, without any genuine offering of goods or services (just directing users to the Complainant’s competitors), it firmly seems to this Panel that the Respondent registered the disputed domain name for the purpose of selling or otherwise transferring the disputed domain name registration to the Complainant, or a competitor of the Complainant, within the meaning of paragraph 4(b)(i) of the Policy.
The above circumstances are, in the view of this Panel, evidence of bad faith registration and use of the disputed domain name.
It is therefore the Panel’s opinion that the disputed domain name was registered and is being used in bad faith by the Respondent and the conditions set out in paragraph 4(a)(iii) of the Policy have been met by the Complainant. 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.
Peter Burgstaller
Sole Panelist
Date: March 17, 2017
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