The Complainant is Rockwell Automation, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Wix.com Ltd., United States / Carlos gabriel godinez lee, nuko automatizacion sa de cv, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 21, 2021, the Registrar transmitted by email to the Center its verification response 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 22, 2021 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 23, 2021. The Complaint has been submitted in English. According to the information provided by the Registrar on March 21, 2021 in its verification response, the language of the Registration Agreement for the disputed domain name is Spanish. On March 22, 2021, the Center sent an email communication to the parties, in English and Spanish, regarding the language of the proceeding. On March 23, 2021, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. 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 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2021. The Center appointed Edoardo Fano as the sole panelist in this matter on May 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. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. 4. Factual Background The Complainant is Rockwell Automation, a United States company operating in the automation field and owning several trademark registrations for ALLEN-BRADLEY, among which: - United States Trademark Registration No. 0712800 for ALLEN-BRADLEY, registered on March 21, 1961; - Mexican Trademark Registration No. 159574 for ALLEN-BRADLEY, registered on November 9, 1970. The Complainant operates on the Internet at the main website “www.rockwellautomation.com”, to which the Complainant’s domain name The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name was registered on September 28, 2020 and the website at the disputed domain name is offering automation products for sale, by reproducing the Complainant’s trademark and logo as well as the trademarks and logos of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant The Complainant states that the disputed domain name Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, it is not commonly known by the disputed domain name and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark ALLEN-BRADLEY is distinctive and internationally known. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain name and the Complainant contends that the impersonation of the Complainant by the Respondent aimed to deceiving Internet users and disrupting the Complainant and its business qualifies as bad faith registration and use. Finally, the Complainant submits that the Respondent is likely to be engaging in a pattern of cybersquatting, since he also registered another domain name concerning the same trademark ALLEN-BRADLEY, namely The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6.1 Language of Proceedings According to paragraph 11(a) of the Rules, the Panel has decided that the language of the proceeding will be English. The language of the Registration Agreement is Spanish, however, the Panel considers appropriate to conduct the proceeding in a language other than that of the Registration Agreement, since the request to translate the Complaint into Spanish would be an unfair burden as well as an unnecessary delay for the Complainant. Furthermore, the Respondent received the case-related communications from the Center both in Spanish and English but did not comment to the Complainant’s request to use English and did not submitted any reply. The Panel would have accepted a response in Spanish, but the Respondent did not file a response. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5. 6.2 Substantive Issues Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (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. A. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark ALLEN-BRADLEY both by registration and acquired reputation and that the disputed domain name Regarding the addition of the country name “mexico” and a hyphen, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the term “mexico” and a hyphen does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark. It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com,WIPO Case No. D2000-0607). The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Respondent has failed to file a response in accordance with the Rules, paragraph 5. The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services because the Respondent is offering for sale the Complainant’s products, without being an authorized distributor or reseller, as well as other automation products of the Complainant’s competitors. Should the Complainant’s automation products sold on the website to which the disputed domain name is redirecting Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have a legitimate interest in using the disputed domain name that is confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to confusion. According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.0, section 2.8.1: “(...) resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the “Oki Data test”, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.” This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. However, the website at the disputed domain name is not only making no reference to the lack of relationship between the Respondent and the Complainant, but it is also offering for sale other automation products of the Complainant’s competitors. Thus, the Panel is of the opinion that this is sufficient to support the allegation of lack of rights or legitimate interests of the Respondent in relation to this disputed domain name. Moreover, the Panel finds that the disputed domain name carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant in relation to the Mexican market. See WIPO Overview 3.0., section 2.5.1. Based on the facts of this case, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of 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) that [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) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark ALLEN-BRADLEY in the field of automation is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, especially because on the website at the disputed domain name the Respondent was passing itself off as the Complainant. The Panel further notes that the disputed domain name is also used in bad faith since on the relevant website the Complainant’s trademark and logo are displayed, together with trademarks and logos of the Complainant’s competitors, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name’s source, sponsorship, affiliation or endorsement. The above suggests to the Panel that the Respondent intentionally registered and is using the disputed domain name in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Edoardo Fano
Sole Panelist
Date: May 6, 2021
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