The Complainant is Mayr-Melnhof Holz Leoben GmBH of Leoben, Austria, represented by Patentanwalt Michael Babeluk, Austria.
The Respondent is Manufacturing and Trading Company, Royal Pellets of Kiev, Ukraine / Morisevich Artem of Lvov, Ukraine. 2. The Domain Name and Registrar
The disputed domain name is registered with Hosting Ukraine LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2019. On January 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. The Complainant filed an amendment to the Complaint on January 25, 2019 and requested English to be the language of the proceedings. The Respondent did not reply on the language of the proceedings.
The Center verified that the Complaint together with the amendment to 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 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2019.
The Center appointed Irina V. Savelieva as the sole panelist in this matter on March 5, 2019. 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 has the European Union trademark registration No. 006873831 of ROYAL PELLETS registered on May 29, 2009 for Class 4: solid fuels and class 19: sawn timber, timber for building, round timber. The trademark in question is, inter alia, used by the Complainant in connection with solid fuels, in particular, wood pellets. The Complaint also registered the European Union Trademark No. 003425981 on January 24, 2005 which combines the graphic element of a crown and letters M M.
As it was established by the Panel, the Complainant’s group was founded in 1850 and is well-known for its timber business, having sawmill plants in Austria, Czech Republic and the Russian Federation and timber processing in Austria and Germany as well as other facilities at different locations.
The Complainant’s company is one of the market leaders in the glued-laminated timber segment and it also produces the highest quality pellets and briquettes under the brands “MM royalpellets” and “MM royalbriquettes” which are popular in the European and other markets.
The disputed domain name was registered on September 5, 2018 and previously resolved to a webpage offering the Complainant’s products for sale. Currently it solely displays an image of forest. 5. Parties’ Contentions A. Complainant a) Identical or confusingly similar
The Complainant contends that the disputed domain name is identical to its trademark. Moreover, it is used by the Respondent for its website “www.” for promotion and sale of wood pellets, and the Respondent as well uses the graphic element of a crown of the Complainant’s logo with its products.
The Complainant, therefore, submits that the disputed domain name should be considered confusingly similar to the registered trademark ROYAL PELLETS in which the Complainant has rights. b) The Respondent has no rights or legitimate interests
The disputed domain name was registered on September 5, 2018, more than nine years after the registration of the Complainant’s trademark. The Complainant has not found that the Respondent is commonly known by the disputed domain name. There is no evidence that the Respondent has a history of using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods and services. c) The disputed domain name was registered and is being used in bad faith
The Complainant submits that the disputed domain name was registered and used in bad faith. The website at “www.” which is using the disputed domain name is aimed to attract Internet users to products of the Respondent. Therefore, the Respondent internationally takes advantage of the Complainant’s reputation to attract users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and the source of the Respondent’s products.
Consequently, the Complainant concludes that the Respondent should be considered to have registered and to be using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules both in electronic and paper forms in English and Russian language.
However, the Respondent failed to file a response to the Complaint and has not sought to answer to the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case and finds no exceptional circumstances why it could not do so; and the Panel will proceed to the decision based on the Complaint in accordance with the Rules, paragraph 5(f).
The Respondent's default does not automatically result in a decision in favour of the Complainant. The Complainant must still prove the elements required by the Policy. In accordance with the Policy, paragraph 4(a), in order to succeed in this proceeding and obtain the transfer and/or cancellation of the disputed domain name, the Complainant must prove that the three following elements are satisfied:
(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.
Pursuant to the Rules, paragraph 15(a), the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with the Rules, paragraph 14(b), the Panel may draw such inferences, as it considers appropriate, from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply. A. Language of Proceeding
The language of the Registration Agreement, as it was confirmed by the Registrar of the disputed domain name Hosting Ukraine LLC, is Russian and according to the Rules, paragraph 11, Russian should be the language of the proceedings. However, the Complainant submits its request for the language of the proceedings to be in English.
The Rules, paragraph 11, states that the language of the proceeding shall be the language of the Registration Agreement subject to the authority of the Panel to determine otherwise.
The Complainant has requested English as the language of the proceeding for the following reasons: (a) the Complaint has been submitted in English due to the Complainant’s place of residence in Austria, (b) the Respondent likely understands English as the website at the disputed domain name is available in English and other languages, c) otherwise undue burden would be imposed on the Complainant.
In the circumstances, the Panel is of the view that the Respondent is at the very fluent with the English language.
The Panel considers that English should be the language of the proceedings; requesting translations would cause substantial burden and expense on the Complainant and cause undue delay.
Given further that the Respondent did not reply to the communications regarding the language of the proceedings, the Panel proceeds to a decision in English. B. Identical or Confusingly Similar
The Complainant has registered the trademark ROYAL PELLETS in May 2009 and this trademark represents a well-known mark in the area of timber fuel products. The Complainant submits that the disputed domain name is identical to its trademark.
The Panel finds that the disputed domain name incorporats the elements “royal” and “pellets” of the Complainant’s trademark in their entirety.
The Panel refers to the consistent practice and past UDRP decisions, which confirm that incorporating a trademark in its entirety by connecting two elements of the trademark does not negate finding that a disputed domain name is identical or confusingly similar to a trademark.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark ROYAL PELLETS.
The Panel finds that the Complainant has satisfied its burden of proof under the Policy, paragraph 4(a)(i), as the first element of the Policy. C. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name.
Even though the Respondent has not filed a response to the Complaint and has not contested the Complainant’s assertions, the Panel will have to consider whether the Respondent’s use of the disputed domain name would indicate the Respondent’s rights or legitimate interests in the disputed domain name.
According to the Policy, paragraph 4(c), the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark 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 complainant’s marks.
A respondent may show its rights or legitimate interests, non-exhaustively, by producing evidence to support the circumstances under the Policy, paragraph 4(c).
By not responding to the Complainant’s contentions, the Respondent in this proceeding has not attempted to demonstrate its rights or legitimate interests.
The Panel further notes that there is no evidence that before notice of the dispute with the Complainant, the Respondent was using the disputed domain name for a bona fide offering of goods or services.
According to the Complainant, the website created by the Respondent is in English, German and Italian languages and linked to the disputed domain name; it is used to advertise the products bearing a logo similar to the Complainant’s trademark.
The described use of the disputed domain name, in the Panel’s view, proves that the Respondent was not involved in a bona fide offering of goods and services in respect of the disputed domain name under the Policy, paragraph 4(c)(i) for the reasons indicated below.
According to Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the use of a trademark as a domain name by an authorized or non-authorized third party is only to be regarded as a bona fide offering of goods or services within the meaning of the Policy, paragraph 4(c), if the following conditions are satisfied:
(a) the respondent must actually be offering the goods or services at issue;
(b) the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(c) the site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; and
(d) the respondent must not try to corner the market in all domain names, thus, depriving the trademark owner of reflecting its own mark in a domain name.
In this respect, the Panel refers to the facts that the Respondent seems to offer goods but not directly affiliated with the Complainant, and, although using the Complainant’s trademark, has not disclosed any information about its relationship with the trademark owner. The Panel notes in this case that the disputed domain name resolves to the commercial website which uses the Complainant's trademark ROYAL PELLETS and resemblance of the Complainant’s logo trademark and so makes a false suggestion of an association or affiliation with the Complainant. While the Panel further notes that the Respondent appears to be selling products similar the Complainant's products, there is no disclaimer disclosing the relationship between the Respondent and the Complainant. Consequently, there is no evidence of the use of the disputed domain name in connection with a bona fide offering of goods or services.
As the Complainant contests with reference to its evidence, the Respondent fails at least on three elements of the above test: firstly, the Respondent does not publish a disclaimer on the challenged website; secondly, the Respondent presents itself as the trademark owner by using the Complainant’s trademark ROYAL PELLETS and logo similar to the Complainant on its website; and finally, the Respondent is depriving the Complainant of reflecting its own mark in the disputed domain name.
The above-described use of the disputed domain name, in the Panel’s view, proves that the Respondent is not involved in bona fide offering of goods and services in respect of the disputed domain name under the Policy, paragraph 4(c)(i).
As to the Policy, paragraph 4(c)(ii), there is no evidence that the Respondent has been commonly known by the disputed domain name. It appears impossible to associate Mr Artem Morisevich with the Complainant’s trademark ROYAL PELLETS and its products.
The Panel recalls that the Respondent registered the disputed domain name in September 2018, it is long after the Complainant registered its ROYAL PELLETS trademark in May 2009. The ROYAL PELLETS trademark and the Complainant’s activity are well-known and highly recognized within its industry.
There is no further evidence that the Respondent is making or has made legitimate noncommercial or fair use of the disputed domain name. Moreover, the Respondent is using the disputed domain name with the purpose of gaining profit. Therefore, the Policy, paragraph 4(c)(iii), does not apply.
The Panel finds the Complainant has established its prima facie case to show that the Respondent has no rights or legitimate interests in the disputed domain name and, accordingly, the Complainant has satisfied the requirements under the Policy, paragraph 4(c), as the second element of the Policy. D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), provides that the following circumstances are deemed to be evidence that a respondent has registered and is using 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 its 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 its website or location or of a product or service on its website or location.
The Complainant contends that the Respondent has violated the bad faith provision of the Policy because the disputed domain name has been registered with the Respondent’s knowledge of the Complainant’s trademark, its activity and reputation.
The Complainant’s use and registration of ROYAL PELLETS trademarks predate any use the Respondent may have made of the disputed domain name. The disputed domain name was registered in September 2018 many years after the Complainant’s use of “MM royalpellets” product and its registration of the trademark ROYAL PELLETS.
The Respondent was aware of the Complainant’s trademark before he registered the disputed domain name.
It is the Panel’s view, under the present circumstances, that the Respondent most likely registered the disputed domain name with full awareness of the Complainant’s trademark as well as the goodwill associated with it.
It is clear, in the Panel’s opinion, that in the mind of an Internet user, the disputed domain name could be directly associated with the Complainant’s trademark, which is likely to be confusing to the public as suggesting either an operation of the Complainant or one associated with or endorsed by it (see AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327).
Specifically, the Respondent attempts to disguise its bad faith activity by presenting its business as “Manufacturing and Trading Company, Royal Pellets of Kiev, Ukraine”.
Further, the Respondent has never been granted permission to register the disputed domain name. The Respondent takes advantage of the ROYAL PELLETS trademark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark and its products as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or products on the Respondent’s website.
The Panel finds that the Respondent’s registration of the disputed domain name shows the Respondent's intent to rely on the risk of confusion with the Complainant's activity and trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name and website associated with it.
These findings, together with the finding that the Respondent has no rights or legitimate interests in the disputed domain name, lead the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel review of the Respondent’s current use of the disputed domain name demonstrates that it leads solely to an image of a forest.
This conduct has been considered as bad faith under the Policy, and other UDRP decisions have also reached the same conclusion, as in Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946, in which the panel stated: “It follows from what has been said about legitimacy that the Panel is satisfied that the Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. Pursuant to Policy, paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).”
The Panel finds that the Respondent has registered and uses the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the requirements of the Policy, paragraph 4(b), as the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with the Policy, paragraph 4(i), and the Rules, paragraph 15, the Panel orders that the disputed domain name be cancelled.
Irina V. Savelieva
Sole Panelist
Date: March 19, 2019
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