The Complainant is Linatex Limited, United Kingdom, represented by The Weir Group PLC, Australia.
The Respondent is Yunkook Jung, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2019. On July 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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. In response to the notification dated July 26, 2019, by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 29, 2019. Further to the amendment to the Complaint, the Center requested for clarification on July 31, 2019, concerning the Complainant’s choice of mutual jurisdiction. Accordingly, on August 1, 2019, a second amendment was submitted by the Complainant.
The Center verified that the Complaint together with the amendments 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 August 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on September 3, 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 part of the Weir Group PLC, a company operating across three sector focus divisions including Weir Group Minerals, which the Complainant fits under. The Complainant is the registered owner of numerous trademark registrations for LINATEX, such as European Union verbal trademark no. 008865263, registered on September 20, 2010, for goods and services in classes 1, 7, 17, 37, and 42.
The Respondent registered the disputed domain name on April 20, 2018. It results from the evidence submitted by the Complainant that the disputed domain name resolves to a parking page with links to commercial websites.
On July 11, 2018, the Complainant sent a cease and desist letter to the Respondent by email requesting the Respondent to cease the use of the disputed domain name and to transfer it to the Complainant. The Respondent did not reply.
In March 2019 the disputed domain name has been put for sale on SEDO for a minimum price of USD 300. It further results from the Complainant’s documented allegations that following a proposal of USD 301 lodged by the Complainant, the Respondent’s counteroffer was first USD 11,000 and in a second step USD 7,700.
In its verification response, the Registrar confirmed that the language of the registration agreement is English. 5. Parties’ Contentions A. Complainant
It results from the Complainant’s undisputed allegations that it uses the trademark LINATEX in particular for premium natural rubber products, which are renowned for abrasion, impact and corrosion resistance. In addition, the brand LINATEX has been used since 1923.
Firstly, the Complainant points out that the disputed domain name is identical or confusingly similar to the registered mark in which the Complainant has rights.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the disputed domain name creates confusion amongst the Internet users as its content promotes and invites the users to visit websites from third parties who may be direct or indirect competitors of the Complainant. The Respondent has no rights over the trademark LINATEX neither is it authorized to use or reproduce in whole or in part the trademark within the disputed domain name. Furthermore, there are no records showing the Respondent has been commonly known by the disputed domain name or by the term LINATEX.
Thirdly, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In its view, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website which offers the public access to other online locations (specifically websites from different third parties who offer for sale rubber product). In addition, in a previous UDRP case, the Respondent was ordered to transfer the domain name (La Française des Jeux v. Yunkook Jung,WIPO Case No. D2019-0902). Finally, the disputed domain name is offered for sale and the Respondent did not reply to the cease and desist letter sent before starting the present proceedings. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(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 has been registered and is being used in bad faith.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the verbal element LINATEX. Reference is made, in particular to European Union verbal trademark no. 008865263, registered on September 20, 2010, for goods and services in classes 1, 7, 17, 37, and 42.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares the same view and notes that the Complainant’s registered trademarks LINATEX are fully and identically included in the disputed domain name.
Furthermore, and according to previous UDRP decisions, the applicable generic Top-Level Domain (“gTLD”) suffix “.com” in the disputed domain name is to be disregarded under the confusing similarity/identity test.
Hence, this Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
First, it results from the Complainant’s uncontested evidence that the disputed domain name resolves to a parking page with links to commercial websites which belong to competitors of the Complainant. Such use cannot - in this Panel’s view - be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy, since such links compete with or capitalize on the reputation and goodwill of the Complainant’s mark and are therefore likely to mislead Internet users (cf. section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In addition, the Respondent did not submit any contemporaneous evidence of bona fide pre-Complaint preparations to use the disputed domain name. In particular, it results from the Complainant’s uncontested allegations that it has not authorized the Respondent’s use of the trademarks LINATEX for registering the disputed domain name comprising said trademark entirely.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might target a noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. In particular, the Panel is satisfied that the registered trademark LINATEX is distinctive so that it is unlikely that the Respondent wanted to fairly use the disputed domain name consisting of this term. In fact, previous UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Furthermore, the Respondent did not provide any explanations for his choice of domain name and did not add any note, information or disclaimer on the website pointing out that it has actually no relationship with the Complainant.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, in particular but without limitation, be evidence of the disputed domain name’s registration and use in bad faith. One of these circumstances is that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 disputed domain name (paragraph 4(b)(i) of the Policy).
It is the view of this Panel that the Respondent has actually registered the disputed domain name primarily for the purpose of selling it to the Complainant or one of the Complainant’s competitors, for valuable consideration in excess of your documented out-of-pocket costs directly related to the disputed domain name. According to the Complainant’s uncontested allegations the Respondent has offered the disputed domain name for sale on a public auctioning website SEDO for a minimum price of USD 300. Following a proposal of USD 301 lodged by the Complainant, the Respondent’s counteroffer was first USD 11,000 and in a second step USD 7,700. These sums are largely in excess of any out-of-pocket costs directly related to the disputed domain name.
In addition, this finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are the following:
(i) the Respondent’s failure to submit a reply to the Complainant’s cease and desist letter;
(ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good faith use;
(iii) the implausibility of any good faith use to which the disputed domain name may be put;
(iv) the Respondent having been involved in at least another case, where the transfer of the disputed domain has been ordered and bad faith being found.
(v) the disputed domain name resolving to a parking page with links to commercial websites offering amongst others competing products (see section 3.5 of WIPO Overview 3.0).
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. 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.
Tobias Malte Müller
Sole Panelist
Date: September 18, 2019
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