The Complainant is Western Digital Technologies, Inc., United States of America (“United States”), represented by Suryomurcito & Co., Indonesia.
The Respondent is Tri Waluyo, WD Electronic, Indonesia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 25, 2020, 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 December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on February 4, 2021. 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, commonly known as simply Western Digital and WD, founded in 1970, is an American computer hard disk drive manufacture and data storage company. It operates globally with a staff of 61,000 and has its headquarters in San Jose, California. The Complainant owns trademark registrations in various countries for its WD trade mark, including in the United States under registration number 3062297 registered on February 28, 2006 and logo and WD word mark registration T0503843D in Singapore with priority registration date September 23, 2004. The disputed domain name was registered on March 1, 2018 and according to the evidence in the Complaint resolved to a website selling electronic components and branded as “WD Electronic”. The disputed domain name currently does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trademark rights in its WD trade mark as noted above. It says that its WD mark is wholly incorporated into the disputed domain name and that the generic word “electronic” does not detract from the fact that the disputed domain name is confusingly similar to its registered trademark. The Respondent is not sponsored by or affiliated with the Complainant in any way. The Complainant has never authorised or licensed the Respondent to use the WD trademark in any manner, including registering the disputed domain name incorporating the Complainant’s WD trademark. The Complainant submits that the disputed domain name currently resolves to website selling electronic components with an obvious intention to gain commercial benefit through trading on the reputation of the Complainant’s WD trademark. Such use of the disputed domain name, says the Complainant, cannot be considered as a bona fide offering of goods or services or constitute making a legitimate noncommercial or fair use under the Policy. The Complainant says that no plausible explanation exists as to indicate the possibility of any circumstances of the type specified in the Policy, or of any other circumstances giving rise to a right to or legitimate interests in the disputed domain name. The Complainant says that it has made continuous and extensive use of its WD mark worldwide and has advertised it widely, including in Indonesia where the Respondent appears to operate the website associated with the disputed domain name. The Complainant says that a Google search for WD would have demonstrated its online presence and that it is inconceivable that the Respondent could have registered the disputed domain name without actual notice of the WD trademark at the time of registration. The Complainant asserts that the website associated with the disputed domain name displays a logo WD, and its color, font and shape in a manner very similar to the get up of the Complainant’s WD trademark. It follows, says the Complainant, that the Respondent must have been aware of the existence of the Complainant and its WD trademark at the time of registration of the disputed domain name. Further, says the Complainant, the website to which the domain name resolves offer electronic components. This, it says, amounts to the Respondent registering the disputed domain names in order to trade on the fame attaching to the well-known WD trademark, in order to attract, for commercial gain, Internet users to visit the associated website, by creating a likelihood of confusion with the Complainant and the WD trademark. Alternatively, argues the Complainant, Internet users who are not looking for an electronic component but instead looking for the Complainant and its WD products may now be directed to the Respondent’s website at the disputed domain name and then exposed to the Respondent’s products, none of which has any connection to the Complainant or the WD trademark. The Complainant says that such inevitable viewer confusion resulting from the re-direction clearly injures it and tarnishes its WD trademark and damages the Complainant’s reputation. This says the Complainant is indicative that the Respondent registered the disputed domain name primarily for the purpose of disrupting the normal business of Complainant and amounts to evidence of its bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has demonstrated that it owns registered trademark rights for its WD trade mark in the United States under registration number 3062297 registered on February 28, 2006. The WD mark is wholly incorporated into the disputed domain name. That the common English word “electronic” follows WD prior to the “.com” Top-Level domain, does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s registered trademark. Further, the Panel notes that the website at the disputed domain name was branded with the WD trade mark in a square box which is very similar to the Complainant’s logo mark registration T0503843D in Singapore and also sold electronics from the website. This is evidence that the Respondent targeted the Complainant’s WD trademark and affirms the confusing similarity. See section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that it has not sponsored and is not in any way affiliated with the Complainant. The Complainant has asserted that it has never authorised or licensed the Respondent to use the WD trademark in any manner including by registering the disputed domain name incorporating the Complainant’s WD trademark. The Complainant has also submitted that the disputed domain name resolved to a website selling electronic components with an obvious intention to gain commercial benefit through trading on the reputation of the Complainant’s WD trademark. Such use of the disputed domain name, says the Complainant, cannot be considered as a bona fide offering of goods or services or constitute a legitimate noncommercial or fair use under the Policy. The Complainant further says that there is no plausible explanation for the Respondent’s use of the disputed domain name in this manner and that none of the circumstances above gives rise to a right to or legitimate interests in the disputed domain name. The disputed domain name currently does not resolve to an active website. The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut or to respond to this case and as a result and also for the reasons set out under Part C below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered on March 1, 2018, many years after the Complainant registered its trademark rights and commenced in business. The Panel notes the Complainant’s assertion that it has made continuous and extensive use of its WD mark worldwide and has advertised it widely, including in Indonesia, where the Respondent is located and appears to operate the website associated with the disputed domain name. The Panel also accepts the Complainant’s submission that a Google search for WD would have most likely demonstrated its online presence at the time of registration of the disputed domain name. Further the fact that the Respondent’s website was branded with the WD trade mark in a square box which is very similar to the Complainant’s logo mark registration T0503843D in Singapore and also sold electronics from the website suggests that the Respondent was likely well aware of the Complainant and its business when it registered the disputed domain name. Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a web site or location or of a product or service on the web site amounts to evidence of registration and use in bad faith. This is exactly what the Respondent appears to have done in this case. It has sought to use the disputed domain name incorporating the Complainant’s WD trade mark to divert Internet users to a website promoting electronic components using a logo mark very similar to the Complainant’s and under the name “WD Electronic”. The Respondent’s website appeared to be using branding and get-up similar to that of the Complainant in order to confuse or deceive Internet users that it has some association or affiliation with the Complainant’s business that it does not have and for its own commercial gain. The fact that the disputed domain name currently does not resolve to an active website does not prevent a finding of bad faith. Accordingly, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint also succeeds under this element 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 Alistair Payne
Sole Panelist
Date: February 18, 2021
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