The Complainants are Koppers, Inc. of Pittsburgh, Pennsylvania, United States of America (“United States”) and Koppers Delaware of Wilmington, Delaware, United States1, represented by Metz Lewis Brodman Must O’Keefe LLC, United States.
The Respondent is Jorge Villalva of Lafayette, Colorado, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2018. On April 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 9, 2018, 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 April 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 3, 2018.
The Center appointed Lynda M. Braun as the sole panelist in this matter on May 9, 2018. 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 an integrated global producer of carbon compounds, chemicals, and treated wood products for the aluminum, railroad, specialty chemical, utility, rubber, steel, residential lumber, and agriculture industries. The Complainant serves customers through a comprehensive global manufacturing and distribution network with facilities located in many parts of the world.
Originally founded in 1921, the Complainant is the owner of multiple trademarks in the United States. These include KOPPERS, United States Registration No. 1,919,197 in International Classes (“IC”) 4 and 19, registered on September 19, 1995; KOPPERS, United States Registration No. 1,902, 735 in IC 19, registered on July 4, 1995; KOPPERS, United States Registration No. 1,940,412 in IC 1, 2 and 4, registered on December 12, 1995; KOPPERS (figurative trademark); United States Registration No. 3,085,821 in IC 1, 2, 4, 17 and 19, registered on April 25, 2006; KOPPERS (service mark), United States Registration No. 3,156,761 in IC 40, registered on October 17, 2006; and KOPPERS (figurative trademark), United States Registration No. 4,409,596 in IC 17, registered on October 1, 2013 (collectively, the “KOPPERS Mark”)
The Disputed Domain Name was registered by the Respondent on January 18, 2018. The Disputed Domain Name resolves to an error page (“404”) that contains no content, and thus, the Disputed Domain Name is being passively used. 5. Parties’ Contentions A. Complainant
The following are the Complainant’s contentions:
-The Disputed Domain Name is identical or confusingly similar to the Complainant’s trademarks.
-The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
-The Disputed Domain Name was registered and is being used in bad faith.
-The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):
(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 was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
The Panel concludes that the Disputed Domain Name is confusingly similar to the KOPPERS Mark.
First, it is uncontroverted that the Complainant has established trademark rights in the KOPPERS Mark based on its longstanding use as well as its numerous trademark registrations for the KOPPERS Mark. The Disputed Domain Name consists of the KOPPERS Mark followed by the letters “us”, the geographic abbreviation for the United States, connected by a hyphen, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
Second, the addition of the geographic term “us” does nothing to minimize the risk of confusion. As stated in section 1.8 of the Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Further, although the Disputed Domain Name contains a hyphen between the words “koppers” and “us”, this is irrelevant for purposes of the Policy, because the presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Slew,WIPO Case No. D2004-0656 (citing Six Continents Hotels, Inc. v. Georgetown, Inc.,WIPO Case No. D2003-0214 (hyphens do not “serve to dispel Internet user confusion here”)); Fort Knox National Company v. Ekaterina Phillipova,WIPO Case No. D2004-0281 (“[T]his Panel believes that the expression true-pay is similar to the trademark TRUEPAY”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case
No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its KOPPERS Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Neither does the Complainant have any type of business relationship with the Respondent. Based on the use of the Disputed Domain Name, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the Respondent’s bad faith registration and use of the Disputed Domain Name.
First, based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the Complainant’s KOPPERS Mark and to disrupt the Complainant’s business.
Moreover, by using the Disputed Domain Name passively and having no content on its web page, the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME,WIPO Case No. D2009-1335; LACER, S.A. v Constanti Gómez Marzo,WIPO Case No. D2001-0177.
Finally, the Respondent knew or should have known of the Complainant’s rights in its KOPPERS Mark when registering the Disputed Domain Name. The Complainant’s KOPPERS Mark, first used in 1921, is well-known and widely used. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its KOPPERS Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 (a finding of bad faith may be made where Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name).
Accordingly, the third element of paragraph 4(a) of the Policy has 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.
Lynda M. Braun
Sole Panelist
Date: May 10, 2018
1 The Complainant Koppers Delaware, Inc. is a subsidiary of the Complainant Koppers, Inc. of Pittsburgh, Pennsylvania. For purposes of this decision, the two entities will be referred to as the “Complainant”.
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