The Complainant is APT Asia Pacific Pty Ltd of Dandenong, Victoria, Australia, represented by Sparke Helmore Lawyers, Australia.
The Respondent is Registration Private, Domains By Proxy, LLC, of Scottsdale, Arizona, United States of America (“United States”) / Adelle Elmazovski of Miami, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (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 March 1, 2019. On March 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 1, 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 March 4, 2019, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 8, 2019.
The Center verified that the Complaint, together with the amended 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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 29, 2019.
The Center appointed Michael D. Cover as the sole panelist in this matter on April 8, 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 is an Australian-registered proprietary company. The Complainant is a member company of the APT Advanced Polymer Group of companies, specializing in the development, manufacture, sale, and installation of chemical products, such as artificial turf, synthetic sport and leisure surfaces, and acrylic coatings.
APT Group was founded in 1994 and now contains a number of region-specific divisions, including APT Asia Pacific.
APT USA is the registered owner of some 200 trademarks in respect of goods and services in Nice classifications 1, 2, 19, 20, 22, 24, 27, 28, and 37 (e.g. WALK-TOP, registration no. 0615065, registered on November 1, 1955). The Complainant is a wholly-owned subsidiary of APT USA.
APT USA claims unregistered trademark rights in the APT trademark since 1994, noting the substantial investment and promotion of the APT trademark that APT Group and each of its subsidiary members has conducted worldwide since APT’s incorporation in July 1994.
The Complainant also claims unregistered common law rights to the APT ASIA PACIFIC trademark since 2013. Annex 5 to the Complaint shows that the Complainant changed its corporate name to the current style on October 31, 2013. As such, the Complainant has traded as APT Asia Pacific since at least as early as October 2013.
There are also three domain names which feature the APT ASIA PACIFIC trademark and these are , and . As set out in Annex 9 to the Complaint, the domain name has been registered in the name of the Complainant since approximately June 2016.
All that is known about the Respondent is that it is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States / Adelle Elmazovski of Miami, Florida, United States
The Disputed Domain Name was registered February 3, 2019. 5. Parties’ Contentions A. Complainant
The Complainant notes the definition of a “trademark” in the Policy includes unregistered rights and continues that significant goodwill and reputation has been built up in the APT trademark and the APT AISA PACIFIC trademark. All such use has been under the authority of APT USA.
The Complainant then goes on to deal with rights and standing of the Complainant and notes that the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that a trademark owner’s affiliate or licensee is considered to have rights in a trademark for the purposes of the UDRP.
The Complainant then goes on to set out the Complainant is a wholly-owned subsidiary of APT USA and a trademark licensee of APT USA in addition. Identical or Confusingly Similar
The Complainant submits the Disputed Domain Name is comprised of the dominant distinctive feature APT, the geographic descriptor “Asia Pacific” and the generic Top-Level Domain (“gTLD”) “.com”. It further submits that the Disputed Domain Name incorporates the entirety of each of the APT trademark and the APT ASIA PACIFIC trademark and that the gTLD element should be ignored in assessing identity and confusing-similarity.
The Complainant concludes the Disputed Domain Name is identical to a trading name of the Complainant, is identical to the corporate title of the Complainant, save for the suffix “Pty Ltd”, and identical to the domain name for the Complainant’s website , save for the “.au” suffix.
The Complainant also notes that the evidence in Annex 12 of the Complaint shows that at least one person has been confused as a result.
The Complainant concludes that the Disputed Domain Name is confusingly-similar to the APT trademark, in which the Complainant and its parent company have unregistered rights pursuant to the Policy, paragraph 4(a)(i); and is identical to the APT ASIA PACIFIC trademark, in which the Complainant and its parent company have rights pursuant to the Policy, paragraph 4(a)(i). Rights or Legitimate Interests
The Complainant notes that, from at least February 5, 2019, the Respondent has concealed its identity on the WhoIs record using a privacy service provided by Domains By Proxy, LLC. The Complainant also notes that at no time has the Complainant authorized the Respondent to use the Disputed Domain Name. In fact, the Complainant asserts, the Disputed Domain Name has been used in connection with an unauthorized email address [...]@ , which is effectively identical to the genuine APT staff email [...]@.au. This is set out in Annex 10 to the Complaint.
The Complainant concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name, especially in circumstances where the Disputed Domain Name has not resolved to any active webpage and what the Complainant calls the “unauthorized conduct”, being targeted, as the Complainant asserts, to impersonate the Complainant through the use of the APT trademark in the unauthorized email cited above.
The Complainant further concludes that there is no evidence that the Respondent satisfies any of the circumstances set out in the Policy, paragraph 4(c), namely that there is no evidence of the Respondent’s use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, not been commonly-known under the Dispute Domain Name (the Complainant cites the registration date of the Disputed Domain Name), and there is no evidence of legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Complainant states, the only use of the Disputed Domain Name was in connection with that it called the unauthorized email address. Registered and Used in Bad Faith
The Complainant states that it is not aware of any active website at the Disputed Domain Name but that passive holding can support a finding of bad faith.
The Complainant concludes that the Respondent registered and is using the Disputed Domain Name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). The Complainant also repeats what it has set out on the unauthorized email, whereby the Disputed Domain Name was registered the day before the unauthorized email was sent, the unauthorized email being designed to impersonate the Complainant.
The Complainant submits that there can be no question that the Respondent has registered and is using the Disputed Domain Name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). Remedy Requested by the Complainant
The Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established common law rights in the trademarks APT and APT ASIA PACIFIC, based on the duration and nature of the use of the marks and the nature and extent of advertising using the mark. See section 1.3 of the WIPO Overview 3.0. Complainant submits in Annex 8 substantial evidence demonstrating widespread publications and use of APT and APT ASIA PACIFIC, as well as various domain name registrations incorporating both marks. In addition, given that the use of the disputed domain name was in furtherance of a fraudulent email scam, the Respondent’s targeting of the Complainant’s marks also supports the contention that the Complainant’s marks have achieved significance as a source identifier. Id.
The Panel also accepts that the Disputed Domain Name is identical to the trademark APT ASIA PACIFIC, in which the Complainant has rights and confusingly similar to the trademark APT in which the Complainant has rights. It is well established that the addition of the gTLD “.com” does not avoid a finding that the Disputed Domain Name is confusingly similar or identical to the Complainant’s trademarks.
The Disputed Domain Name reproduces the Complainant’s trademarks in full.
The Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark APT ASIA PACIFIC and confusingly similar to the Complainant’s trademark APT. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. There is no evidence that the Complainant has authorized or licensed the Respondent to use either of its trademarks and the Complainant specifically states that it has not done so.
The Respondent has not demonstrated use or demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services, that it has been commonly-known by the Disputed Domain Name, or that it has been making legitimate noncommercial use of the Disputed Domain Name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark of the Complainant.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The Panel accepts that the Disputed Domain Name has been registered and used in bad faith. The use of a privacy service is a pointer to this. Such use as has taken place of the Disputed Domain Name relates to what the Complainant has called the unauthorized email.
The Policy, paragraph 4(b) sets out a non-limiting list of circumstances which shall be evidence of the registration and use of a domain name in bad faith.
In this instance, it is highly unlikely that the Respondent was not aware of the Complainant’s unregistered rights in the APT and APT ASIA PACIFIC trademarks. Against the background of that, the use of the privacy service and the unauthorized email, the Panel finds that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business, the Complainant, and has also, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to an online location, namely the unauthorized email address, by creating a likelihood of confusion with the Complainant’s trademarks APT and APT ASIA PACIFIC as to the source, affiliation of a service on the Respondent’s location.
The Panel therefore finds that the Disputed Domain Name has been registered and is being used 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 Name be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: April 22, 2019
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