The Complainant is Seco Tools AB, Sweden, represented by SILKA Law AB, Sweden.
The Respondent is Evraz-Engineering Ltd., Russian Federation. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2019. On October 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 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 October 25, 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 amendment to the Complaint on October 25, 2019. 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 October 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2019. The Center appointed Assen Alexiev as the sole panelist in this matter on December 4, 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 one of the world’s largest providers of comprehensive metal cutting solutions for milling, stationary tools, hole making and tooling systems. It operates in more than 75 countries. The Complainant is the owner of the following trademark registrations of the sign “PRAMET” (the “PRAMET trademark”): - the International trademark PRAMET with registration No. 367748A, registered on April 6, 1970 for goods in International Classes 6, 7 and 8; The disputed domain name was registered on March 5, 2018. It resolves to a website that features the Complainant’s Dormer Pramet tools. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s PRAMET trademark, as it reproduces the trademark in its entirety with the addition of the “.tools” generic Top-Level Domain (“gTLD”). The word “tools” fails to distinguish the disputed domain name from the PRAMET trademark; rather, its combination with “pramet” refers to the Complainant's Dormer Pramet tools. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent is not an agent or licensee of the Complainant and is not commonly known by the disputed domain name. The Complainant adds that the Respondent is not carrying out a legitimate use of the disputed domain name, but is using it to impersonate the Complainant. The disputed domain name resolves to a website that offers for sale tools manufactured by the Complainant. This website suggests that there is a connection with the Complainant, as the DORMER PRAMET logo, used by the Complainant for its tools, appears prominently on the top left side of the website, while on the bottom of the website there is the text “© 2015 All rights reserved. DORMER PRAMET”. The overall look and feel of the Respondent’s website is similar to the Complainant’s official Dormer Pramet website at “www.dormerpramet.com”. According to the Complainant, these circumstances show that the Respondent attempts to trade off the goodwill of the Complainant’s trade name and the PRAMET trademark and to divert Internet traffic to its website. The Complainant also points out that the Respondent does not meet the requirements set out in Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903, as the website at the disputed domain name does not include an adequate disclaimer and the Respondent is using the Complainant’s logo on this website. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It is unlikely that the Respondent was not aware of the Complainant’s PRAMET trademark and its value when it registered the disputed domain name, and it chose it intentionally based on this trademark in order to attract Internet traffic to its website. According to the Complainant, the Respondent takes advantage of the PRAMET trademark by intentionally attempting to attract visitors to the Respondent’s website by creating a likelihood of confusion with this trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent does not disclose on its website the absence of relationship between itself and the Complainant, and this website offers information and services for Pramet tools. The Complainant points out that it has made several attempts to contact the Respondent through a cease and desist letter, but its efforts to solve the dispute amicably were unsuccessful. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …” The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the PRAMET trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.tools” gTLD section of the disputed domain name. At the same time, the Panel is of the opinion that this element of the disputed domain name is relevant to the issues of rights and legitimate interests and bad faith, and will be considered accordingly, as set out below in this decision. The relevant part of the disputed domain name is therefore the element “pramet”. It is identical to the PRAMET trademark. In view of the above, the Panel finds that the disputed domain name is identical to the PRAMET trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the disputed domain name and there is no relationship between the Parties. The Complainant also points out that the Respondent is not using the disputed domain name for a bona fide purpose, but attempts to impersonate the Complainant through the association of the disputed domain name to a website that features the Complainant’s products and logo and is similar to the Complainant’s website, and does not include a prominent disclaimer of the lack of relationship between the Parties. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence provided by it. The disputed domain name is identical to the distinctive PRAMET trademark, and resolves to an active website that features various Dormer Pramet tools manufactured by the Complainant. This website has an appearance that suggests that it is operated by the Complainant, as it describes the Complainant and refers to it as “our company”, includes the Complainant’s logo, contains a copyright notice that refers to the Complainant, and does not mention that the owner of the website is unrelated to the Complainant. In addition, the disputed domain name is registered in the “.tools” gTLD, which is likely to create an impression in Internet users that it is related to a website that offers some kind of tools, and tools are what the Complainant produces and offers on the market under its PRAMET trademark. This may well lead Internet users to believe that the disputed domain name refers to an official website of the Complainant where the tools that it manufactures are featured. In view of the above, it appears to the Panel that the Respondent, being aware of the attractiveness of the PRAMET trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill for commercial gain by impersonating the Complainant and thus confusing Internet users and attracting them to the Respondent’s website. In the Panel’s view, this conduct of the Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: “(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” As discussed above, the disputed domain name is identical to the PRAMET trademark and is registered in the “.tools” gTLD. It resolves to an active website that falsely suggests that it is an official website of the Complainant and features its Dormer Pramet tools. The Complainant contends that the Respondent has not received any authorization for its activities by the Complainant, and the Respondent does not dispute the statements of the Complainant and does not provide any plausible explanation about the registration and use of the disputed domain name. Taking the above into account, the Panel accepts that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the PRAMET trademark. It is more likely than not that by creating a likelihood of confusion with the Complainant’s PRAMET trademark, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location of the Complainant where its Dormer Pramet tools are featured, for commercial gain. Therefore, the Panel finds that the disputed domain name has been registered and 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 Assen Alexiev
- the International trademark PRAMET with registration No. 1165872, registered on May 13, 2013 for goods in International Classes 6, 7 and 8;
- the Russian trademark PRAMET with registration No. 270142, registered on June 11, 2004 for goods in International Classes 6 and 7; and
- the Russian trademark PRAMET with registration No. 468549, registered on August 15, 2012 for goods in International Class 8.
Sole Panelist
Date: December 10, 2019
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