The Complainant is Covestro Deutschland AG of Leverkusen, Germany, represented by BMP Legal, Germany.
The Respondent is Marco Bravo, Neoplast of Morelia, Michoacán, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 25, 2017. On February 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 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 March 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2017.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on April 20, 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 one of the world’s largest polymers companies. It stems from the German chemicals and pharmaceutical Bayer AG group and became a separate legal entity in September 2015.
The Complainant claims to be a leader in research and production and to be represented at 30 locations worldwide, including a local subsidiary in Mexico: Covestro S.A. de C.V.
The Complainant owns several registrations for the trademark MAKROLON, including German registrations No. 673907 registered on April 2, 1955, in classes 1 and 17 and No. 811848 registered on November 5, 1965, in classes 1, 16,17,19 and 21; United States of America registrations No. 2539464 registered on February 19, 2002, in class 17 and No. 1152057 registered on April 28, 1981, in class 1; Mexican registrations No. 96600 registered on May 1, 1959, in class 1 and No. 266905 registered on September 29, 1981, in class 1 and many others. The Mexican registrations are still in the name of the Complainant’s legal predecessor and the pertinent applications for the recording of the change of name have already been filed with the Instituto Mexicano de la Propiedad Industrial.
The disputed domain name was registered on June 15, 2010. The disputed domain name previously resolved to a website advertising the Complainant’s products and competing products for sale. At the time of this decision, the disputed domain name resolves to a parking page displaying pay‑per‑click links. 5. Parties’ Contentions A. Complainant
The Complainant contends, basically, the following:
That the trademark MAKROLON is used in connection with the Complainant’s product polycarbonate which is used in a wide variety of products and was first discovered by Bayer AG in 1953. The production of MAKROLON began in 1958. Moreover, the Complainant’s trademark MAKROLON is well-known worldwide.
The Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to apply for or use any domain name incorporating the trademark MAKROLON.
The Respondent uses the disputed domain name to forward Internet users to a website advertising the Complainant’s products and competing products for sale.
To the best of the Complainant’s knowledge and belief, the trademark MAKROLON is not used in commerce by third parties.
The disputed domain name is identical or confusingly similar to the trademark MAKROLON in which the Complainant has rights.
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent has registered and uses the disputed domain name in bad faith.
Consequently, the Complainant requests the Panel to order the transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel considers that the disputed domain name and the trademark MAKROLON in which the Complainant has rights are confusingly similar to the extent of causing Internet user confusion. In this connection, the trademark MAKROLON is completely included in the disputed domain name in which it is clearly recognizable as such and undoubtedly constitutes the primary distinctive feature. The addition of the letters “mx” which stand for the geographical abbreviation of Mexico may lead consumers to believe that it relates to the Complainant´s business in that country and therefore serve to increase confusion rather than to distinguish Respondent’s disputed domain name. As it has been well established in previous UDRP decisions, the Panel will disregard the generic Top-Level Domain (gTLD) “.com” form the test of confusing similarity between the Complainant’s trademark and the disputed domain name
Therefore, the Complainant has succeeded on this first element of the Policy. B. Rights or Legitimate Interests
The second element that the Complainant must prove pursuant to paragraph 4(a)(ii) of the Policy is that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy in paragraph 4(c) sets out various ways in which a respondent may demonstrate rights or legitimate interests in a domain name.
Although the Policy states that the complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e., that a respondent has no rights or legitimate interests in a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the burden of submitting evidence therefore shifts to the respondent. The respondent must then produce evidence to demonstrate its rights or legitimate interests in the domain name in order to refute the prima facie case.
The Panel finds that the use of the disputed domain name to offer the Complainant’s products for sale alongside those of the Complainant’s competitors does not amount to a bona fide offering of goods or services, nor to a legitimate noncommercial or fair use of the disputed domain name.
The Complainant has not in any way granted the Respondent rights to use its mark, and is in no way affiliated with the Respondent. Neither has the Respondent come forward in these proceedings to assert any rights or legitimate interests in the disputed domain name. This is sufficient for the Panel to conclude that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See GGG Filmproduktion und Vertrieb e.K. v. E4 Group and Frank Jensen,WIPO Case No. D2006-1177. Thus, the burden of production of evidence has effectively been shifted to the Respondent, who did not reply to the Complainant’s contentions and, therefore, has not made such showing.
Additionally, there is no evidence that the Respondent is commonly known as or identified by “makrolonmx”.
In view of the foregoing, and in absence of a plausible explanation from the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
In accordance with paragraph 4(a)(iii) of the Policy, the third element that a complainant must prove is that the disputed domain name has been registered and is being used in bad faith.
The Policy in paragraph 4(b) sets out various circumstances, which may be treated by the Panel as evidence of the registration and use of a domain name in bad faith.
The Complainant is a widely-known company which owns trademark registrations for MAKROLON in several countries which predate by many years the registration of the disputed domain name.
The trademark MAKROLON is a fanciful word and highly distinctive. Clearly, the Respondent knew of its existence at the time of registering the disputed domain name, which appears to have been registered in bad faith for the purpose of profiting from the misleading association between the disputed domain name and the Complainant’s well-known mark.
The disputed domain name resolved to a website which featured the Complainant’s products as well as competing products for sale, such as those of the brands Makrolit and Domolit.
Furthermore, as stated by the Complainant and on the basis of printouts of the website to which the disputed domain name resolves, and in absence of a rebuttal by the Respondent, the Panel finds that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
For such reasons, the Panel finds that the Respondent both registered and is using the disputed domain name in bad faith and that the Complainant has therefore made out the third element of its case. 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.
Miguel B. O’Farrell
Sole Panelist
Date: April, 21, 2017
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